- PTAB · Feb 20, 2024 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 32, 38, and 40, finding a reasonable likelihood of prevailing on anticipation by Spain and obviousness over Spain as evidenced by Agiwal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.6 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As Petitioner asserts, in the prosecution history, Dressler is only referred to for the rejection of dependent claims for limitations not found in the challenged claims. Ex. 1002, 56; see also Pet. 45–46; PO Resp. 9–10. Further, Petitioner points out that the Examiner’s reliance on Dressler was for a disclosure that is common to Spain, but is not relied upon in the Petition. Pet. 45–46, Ex. 1006 ¶ 53. As such, there is no evidence in the prosecution history that the Examiner’s reliance on Dressler is related to any issue in the challenges here. Moreover, while the Examiner’s reference to Dressler infers that the Examiner performed some evaluation of that reference, Spain contains additional disclosures that are not in Dressler. See Ex. 1006 ¶¶ 64–65, 67, 82–84, 70–72, 80, Fig. 15; Ex. 1016. Accordingly, any evaluation of Dressler does not reflect a full evaluation of Spain. There is no support in the prosecution history of an evaluation of Spain, except for the Examiner’s initialization of an Information Disclosure Statement, which is not indicative of a substantive evaluation. Similarly, the references to the prior art disclosures alleged by Patent Owner to be the same as Spain were only initialed on Information Disclosure Statements. See Prelim. Resp. 12. Accordingly, the record does not provide support that Spain was substantively evaluated by the Examiner during prosecution.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Spain. b. Claim 32 Claim 32 is a system claim that recites similar limitations to the limitations of method claim 1. Petitioner relies on similar evidence and argument to that presented for claim 1 in support of Spain’s disclosures of the claim 32 limitations. Pet. 35–38. Patent Owner presents no additional arguments specifically directed to claim 32 that we have not already addressed. See generally Prelim. Resp. We have reviewed the Petition’s showing for this claim and find that sufficient evidence has been provided in support of the anticipation challenge at this stage of the proceeding. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 32 is anticipated by Spain.” slip op. at 34
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court issued claim constructions in the Google action for all disputed terms of the ’753 patent claims at issue. Ex. 1028. Petitioner uses the district court’s construction for the terms: “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 19–21 (citing Ex. 1008 ¶ 54; Ex. 1024, 1, 2; Ex. 1028, 8, 18, 20). Petitioner proposes that any other claim terms not addressed by the district court should be interpreted consistent with the Phillips standard. Id. at 19. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 39. For the purposes of this Decision, we will use the district court’s claim constructions, which have been agreed to by the parties at this juncture. We determine that we need not expressly construe any claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · Feb 20, 2024 · IPR2023-01211 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 4, 25, 26, and 35, finding a reasonable likelihood that Google would prevail on at least one asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1, 4, 25, 26, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.10 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 30–31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”6 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The 6 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 17– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’104 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”) (Patent Owner’s emphasis). We disagree with these arguments for the reasons discussed below. Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · Jan 19, 2024 · IPR2023-01047 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 27, 28, 31, and 33 over all four asserted obviousness grounds; the unrebutted Hartsell challenge to claim 27 was compelling and met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstituted
“under § 314. In particular, based on the most recent median time-to-trial statistics for the Eastern District of Texas, the district court’s projected trial date significantly precedes our projected deadline for a final written decision (factor 2). Also, the parties and district court are significantly invested in the district-court proceeding, as the record reflects that claim construction and fact discovery have been completed (factor 3). Petitioner’s proposed stipulation that it will “cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims on which trial is instituted, to the extent Petitioner even asserts the same combination in the district court” (Pet. 81) weighs against discretionary denial (factor 4), but this type of limited stipulation is not sufficient to outweigh factors 2 and 4 US 6,496,291 B1; issued Dec. 17, 2002. Ex. 1007. 3 on these facts. We next turn to the “compelling merits analysis” of Fintiv factor 6. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2022) (precedential).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’323 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention would have had “a master’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately four to six years of work experience in the field of communication networks.” Pet. 12. Petitioner also states that a lack of work experience can be remedied by additional education or vice versa. Pet. 12 (citing Ex. 1003 ¶ 22). Patent Owner does not address the level of ordinary skill in its Preliminary Response. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, which is consistent with the level reflected by the ’323 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner does not address claim interpretation. At this stage, we determine that it is unnecessary to construe any terms, although we preliminarily agree with Petitioner that the ’323 patent identifies FPGAs as a type of ASIC device. See Ex. 1001, 2:45–48; Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,921,323 - PTAB · Dec 8, 2023 · IPR2023-00946 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–4, 8, 10, 11, and 17–19 on all asserted grounds, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. court has set a trial date for February 20, 2024. Pet. 4.5 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Petitioner includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Patent Owner does not. Compare Pet. 4–5, with Prelim. Resp. 11. At this stage, Patent Owner and its expert Dr. Abowd do not say if, or why, they disagree with this part of Petitioner’s articulation. See Prelim. Resp. 11–12; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Petitioner’s proposal is consistent with the types of technical problems that the ’217 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:25–48, 6:38–50. And because the remainder of Petitioner’s proposal is substantially undisputed, we adopt Petitioner’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Patent Owner may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“that the applicant intended to limit a “manipulatable input device” to the physical devices identified in the Specification, and therefore exclude the identified physical objects. To the extent Patent Owner is arguing that the amendment replacing “peripheral configured to be manipulated by the user” with “manipulatable input devices” was intended to disclaim physical objects from the scope of the claims, Patent Owner has not demonstrated that the amendment amounts to a “clear and unmistakable” disavowal. See Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1141 (Fed. Cir. 2021) (Prosecution disclaimer “attaches if a patentee ‘has that is ‘clear and unmistakable.’” (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324–26 (Fed. Cir. 2003)). Here, the amendment does not appear, based on the preliminary evidence, to be an unambiguous disavowal because it uses a different term (“manipulatable input device”) than the term from the Specification (“physical device”). Moreover, applicant’s remarks accompanying the amendment do not state that the amendment was intended to distinguish peripherals that are physical objects from peripherals that are physical devices; nor do the remarks state that the amendment was intended to exclude physical object peripherals from the scope of the claims. See Ex. 1012, 342–47.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,727,217 - PTAB · Dec 7, 2023 · IPR2023-00944 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23 based on a reasonable likelihood of obviousness over Douris and Rodriguez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’222 patent. Accordingly, we institute an inter partes review as to the challenged claims on the unpatentability ground asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also find Petitioner’s reasons to combine Douris and Rodriguez persuasive for the purposes of institution. We agree that the combination would have provided an effective way of getting the user’s attention and would have been superior to the video or audio feedback disclosed in Douris in some situations, for example, when a quiet environment must be observed or when it is too noisy. See Pet. 23–24 (citing Ex. 1002 ¶ 73). Dr. Cooperstock testifies that in view of the audio overlay information disclosed by Douris as beneficial in certain situations, “[a]n ordinarily skilled artisan would have appreciated that the same advantage attaches to haptic feedback, as it would have provided a third modality to present information to the user—the sense of touch—without impacting the user’s field of vision.” Ex. 1002 ¶ 73. At this stage, we are persuaded by Dr. Cooperstock’s testimony and we determine that Petitioner provides an adequate reason for one of ordinary skill in the art to have modified Douris’s KSR, 550 U.S. at 420 (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). We are also persuaded at this stage that person of ordinary skill in the art would have had a reasonable expectation that the combination would have been successful. Dr. Cooperstock testifies that the use of control signals to provide haptic feedback in augmented reality systems was well-known before March 2013. Ex. 1002 ¶ 74 (citing Ex. 1004 ¶¶ 3, 9–10). He further testifies that “Rodriguez also identifies a number of commercially available, off-the-shelf components and toolkits for implementing haptics in mobile devices,” and that Rodriguez’s descriptions are sufficient for implementing the detailed functionality without undue experimentation. Id. (citing Ex. 1004 ¶¶ 3, 9–10, 71, 98); Pet. 24. Rodriguez discloses multiple Software Development Kits that would have allowed skilled artisans to develop software to control the haptic actuators. Ex. 1004 ¶ 71. On this record, we find Dr. Cooperstock’s testimony consistent with Rodriguez and persuasive to show that a person of ordinary skill in the art would have found the prior art disclosures adequate to implement Petitioner’s proposed combination.8 Thus, Petitioner sufficiently establishes that the combination of Douris and Rodriguez teaches this limitation.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner acknowledges that in the related district court case, the court has set a trial date of February 20, 2024. Pet. 4.10 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also” slip op. at 40
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,269,222 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00943 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–4, 6–8, and 11–14 on all petition grounds after finding a reasonable likelihood that claims 1 and 11 are obvious over Poupyrev and Yun.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’524 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Meta argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction, including implementation of computerbased systems and software for providing haptic feedback effects to a user.” Pet. 4–5 (citing Ex. 1002 ¶¶ 12–13). At this stage, Immersion does not contest this definition of the level of ordinary skill. See Prelim. Resp. 9. Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’524 patent, we adopt Meta’s articulation of the level of ordinary skill for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,896,524 - PTAB · Dec 6, 2023 · IPR2023-00945 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–3, 7–10, 14–17, and 20 on all petition grounds; Meta showed a reasonable likelihood of prevailing on obviousness over Nogami.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion as to Claim 1 For the above reasons, we determine that Meta has shown sufficiently that Nogami teaches all the limitations of claim 1, and that based on Nogami’s teachings, a person of ordinary skill in the art would have had reason to make a system as recited in claim 1. We therefore determine that Meta is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Nogami.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Meta includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Immersion does not. Compare Pet. 4–5, with Prelim. Resp. 9. At this stage, Immersion and its expert Dr. Abowd do not say if, or why, it disagrees with this part of Meta’s articulation. See Prelim. Resp. 8–9; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Meta’s proposal is consistent with the types of technical problems that the ’143 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:35–58, 6:48–60. And because the remainder of Meta’s proposal is substantially undisputed, we adopt Meta’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Immersion may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the preliminary record, we have not identified any claim terms, including “real space,” that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we analyze the claim language below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,664,143 - PTAB · Dec 6, 2023 · IPR2023-00947 · APJ Michael R Zecher · IPR · Institution
Instituted IPR on claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Meta has provided a Sotera stipulation. Pet. 4; see also Prelim. Resp. 29 (Immersion acknowledging that Meta offered a Sotera stipulation). We do not agree with Immersion’s argument that we can effectively ignore the interim guidance in the Director’s Memo because, prior to her guidance, another Board panel did not find a Sotera stipulation to be sufficient to overcome a trial date scheduled significantly before the projected due date for a final written decision. Prelim. Resp. 29–30 (citing Cisco, IPR2021-00329, Paper 13). As Immersion correctly notes, the Cisco case issued in July 2021, which is roughly one year before the Director Memo issued in June 2022. See id. at 29. The Director Memo clearly states that it is “binding agency guidance,” which, in essence, abrogates any prior inconsistent holdings by Board panels regarding the application of Fintiv, including the non-precedential holding in the Cisco case relied on by Immersion. Director Memo at 3. Put simply, because Meta has provided a Sotera stipulation, the Director Memo is controlling and the Fintiv factors are not a basis for denying institution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions for the claim term “free space” in the district court case, but Meta nonetheless contends that it “does not believe any term of the ’298 patent requires express construction at this time because . . . the claims are obvious under the constructions proposed by both parties in the pending litigation, or any other reasonable construction.” Pet. 6 (citing Ex. 1007, 2–3 (“Joint Claim Construction Statement” submitted by the parties in the district court case)). In its Preliminary Response, Immersion contends that “all claim terms should be afforded their ordinary and customary meaning, as [would have been] understood by a [person of ordinary skill in the art], in the context of the [’298] patent specification.” Prelim. Resp. 9 (citing Ex. 2002 ¶¶ 37, 38 (Declaration of Gregory Abowd, D.Phil.)). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4–5 (citing Ex. 1002 ¶¶ 12, 13). Relying on the testimony of Dr. Abowd, Immersion offers the same assessment of the level of ordinary skill in the art, except Immersion excludes industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body. Prelim. Resp. 8–9 (citing Ex. 2002 ¶ 11). The level of skill advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer science, or an equivalent degree. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise its arguments exclusively on its own industry experience. To the extent necessary, and for purposes of institution, we adopt Meta’s assessment of the level of ordinary skill in the art because Dr. Cooperstock’s identification of relevant industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body, is consistent with the ’298 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The dispute between the parties appears to center on how Nogami’s system assigns reference intensity levels to each of stimulation generation units 10–12 worn by user 1. Relying on the testimony of Dr. Cooperstock, Meta asserts “[i]t would have been obvious to implement Nogami to provide an identifier for each stimulation generation unit [10, 11, and 12] in order to allow CPU 201 to distinguish and associate it with the region of the body [of user 1] on which it is worn.” Pet. 33 (quoting Ex. 1002 ¶ 89). At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because it is consistent with Nogami’s disclosure that CPU 201 generates operation setting information (e.g., the reference intensity levels) for controlling the operation of stimulation generation units 10–12, which can vary based on whether these stimulation generation units are located in attention range 50. Ex. 1003 ¶¶ 120, 174, Fig. 4, step 406. Dr. Cooperstock further testifies that “[t]he concept of an ‘identifier’ for a peripheral is a basic concept in computer science or engineering” because [i]t was elementary knowledge of ordinary skilled artisans that virtually all objects on a computer capable of being operated on or manipulated by a computer – such as peripheral device, a computer file, and even a location within the computer’s memory – are associated with an identifier that allows the computer to identify the object and distinguish it from other objects in the computer. Ex. 1002 ¶ 90. At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because Nogami discloses an example of using an identifier in this way. That is, Nogami disclose using barcode 45 that “indicates ID [identification] information (e.g., an ID) unique to the stimulation generation unit 10.” Ex. 1003 ¶ 206, Fig. 11. Although Nogami discloses the example of barcode 45 only in relation to stimulation generation unit 10, it seems reasonable for a person of ordinary skill in the art to infer this teaching of barcode 45 equally applies to stimulation generation units 11 and 12 so that CPU 201 may also use barcode 45 as unique identifiers for these two stimulation generation units to distinguish them from stimulation generation unit 10. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Taking into account Nogami’s disclosure with respect to assigning different reference intensity levels depending on the region of the body of user 1 on which stimulation generation units 10–12 are worn, together with Nogami’s teaching or suggestion of using an identifier (e.g., barcode 45) that indicates ID information unique to each of stimulation generation units 10– 12, we are persuaded that the preliminary record supports that it would have” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,248,298 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.