- PTAB · Aug 3, 2023 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Institution
Instituted inter partes review of claims 1–15 and 17–18 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“4. Analysis We are not persuaded to deny institution based on Section 325(d). Although Li was previously presented to the Office under part 1 of Advanced Bionics, as Petitioner acknowledges, Kim was not. Even were we to discount Li because of Section 325(d), the challenge here is not based solely on Li. Some grounds rely on Kim. See Pet. 3. Kim differs from Li and the Kim and Li combination was not previously considered. These differences provide a separate basis for the challenge presented here. Kim was not presented to the Examiner during prosecution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“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_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure 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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- Interim Procedure 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. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 3. Petitioner asserts that its stipulation is consistent with the one in Sotera. Id.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth above, Petitioner has shown a reasonable likelihood that claim 1 would have been anticipated by Li.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’430 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology. More education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. 33–35. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,448,430 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00397 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–5, 7–14, and 16–23 based on a reasonable likelihood that claims 1–5 are obvious over Stuttard and Shirazi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’775 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’775 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’775 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, and 16–23 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00396, Petitioner challenges claims 1–5, 7– 14, and 16–23 as obvious over other references not relied on in the Petition before us. IPR2023-00396, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00396 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00396, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 6. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00395 · APJ Ken B Barrett · IPR · Institution
Instituted review of claims 1–5, 7–14, 16–22, and 24 on obviousness over Stuttard and Shirazi; the Board found a reasonable likelihood of success on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’616 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’616 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’616 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00394, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over references not relied on in the Petition before us. IPR2023-00394, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and 7 Although there is only one ground in the Petition, Petitioner analyzes the challenged claims as three groups under the headings “Ground 1A,” “Ground 1B,” and “Ground 1C.” See, e.g., Pet. i–v (Table of Contents). 8 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. See Pet. 1, 4 (applying pre-AIA provisions). 9 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61 (explaining that the Board may exercise discretion under 35 U.S.C. Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00394 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00394, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 5. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections. 1. Input-Output Unit Independent claims 1, 7, and 16 each recite an “input-output unit.”” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,754,616 - PTAB · Jul 19, 2023 · IPR2023-00559 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, and granted Amazon’s motion to join IPR2022-01060 subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” The patentability challenges in the Google IPR met the “reasonable likelihood” standard of § 314(a). Google Inst. 38.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2022- 01060. Still, we impose the following restrictions to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing: (1) Google LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding; (2) Amazon.com, Inc. is bound by all Google LLC’s filings in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Amazon.com, Inc. receives permission to file an independent paper; and (3) Amazon.com, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding while Google LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2022-01060 and protects the interests of Patent Owner and of Google LLC as the original petitioner in IPR2022-01060. Thus, Petitioner’s Motion for Joinder is granted with the restrictions discussed above.” slip op. at 7
- BurdenDecided for petitioner
“for Joinder. Even so, as the moving party, Petitioner has the burden of proof to show that it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b) (2023).” slip op. at 6
NonePatents in suitUS 8,503,691 - PTAB · Jul 19, 2023 · IPR2023-00561 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 23–28 and 41–46 on all petition grounds and granted Amazon’s motion to join IPR2022-01061, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” The patentability challenges in the Google IPR met the “reasonable likelihood” standard of § 314(a). Google Inst. 38.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2022- 01061. Still, we impose the following restrictions to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing: (1) Google LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding; (2) Amazon.com, Inc. is bound by all Google LLC’s filings in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Amazon.com, Inc. receives permission to file an independent paper; and (3) Amazon.com, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding while Google LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2022-01061 and protects the interests of Patent Owner and of Google LLC as the original petitioner in IPR2022-01061. Thus, Petitioner’s Motion for Joinder is granted with the restrictions discussed above.” slip op. at 7
NonePatents in suitUS 8,503,691 - PTAB · Jul 12, 2023 · IPR2023-00216 · APJ Jason M Repko · IPR · Institution
The Board instituted inter partes review of claims 1–9 based on a reasonable likelihood that claim 1 is anticipated by Powers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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) (2018). For the reasons discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding and on this current record, Petitioner’s assertion is sufficient. Id. In particular, Powers arranges the three microphones in a horizontal line. Ex. 1003, 41. Power also explains that those signals are combined in a delay-and-subtract approach. Id. This is illustrated in the Petition’s annotated version of Power’s 2a, showing the delays (T1, T2, T3) and the subtract units combining the signals. See Pet. 19. Thus, at this stage and on this record, Petitioner has shown that Powers discloses “receiving acoustic signals at a physical microphone array and in response outputting a plurality of microphone signals from the physical microphone array,” as claimed. In reaching our conclusion, we credit Dr. Stern’s testimony about the microphone array and the signals because it is consistent with Powers. See Ex. 1002 ¶¶ 46–48.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“III. ANALYSIS A. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that no claim terms require construction. Pet. 17. Patent Owner did not file a Preliminary Response. At this stage, no terms are in controversy. Thus, we do not construe any terms in this decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“In reaching our conclusion, we credit Dr. Stern’s unrebutted testimony about the output. See Ex. 1002 ¶ 57. Thus, at this stage and on this record, Petitioner has shown that Powers discloses generating output signals, as recited in claim 1. See Pet. 22–23.” slip op. at 12
Claim construction§ 102 anticipationPatents in suitUS 8,280,072 - Apple Inc. v. Memoryweb, LLCNo claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00032 · APJ Jason M Repko · IPR · Final written decision
Claims 1–12 were not shown unpatentable over A3UM, Belitz, and Rasmussen because the obviousness challenge relied on an unsupported account of A3UM’s Places view and an inadequate combination rationale.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 (or 2014) would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 10. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 18. We continue to find that the skill level identified by Petitioner (Pet. 9) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do no need to construe any terms to resolve the issues in this case.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“size version of the selected image in the Places view. PO Resp. 55 (citing Ex. 2025 ¶¶ 156–157). Patent Owner’s argument is adequately supported by Dr. Surati’s testimony. Ex. 2025 ¶¶ 156–157. We credit Dr. Surati over Dr. Terveen on this issue because Dr. Surati’s testimony is consistent with the teachings in A3UM. See id.; Ex. 1003 ¶ 186. Specifically, the Petition and Dr. Terveen’s declaration rely on page 251 of A3UM to support the assertion that the Places view displays the original digital image in the Viewer. See Pet. 50; Ex. 1003 ¶ 186. The cited part of A3UM provides an overview of the Viewer. Ex. 1005, 251. A screenshot showing the Viewer and Browser is reproduced below. Id. The screenshot shows a Viewer displaying the image selected in the Browser. Id. The Browser displays several thumbnail images. Id. The Viewer displays a larger detailed view of the selected thumbnail image. Id. Dr. Surati testifies that this part of A3UM is not describing the Places view. Ex. 2025 ¶ 159. According to Dr. Surati, “clicking the thumbnail in the Browser in the Places view does not cause the Places view map to be replaced with a full size image corresponding to the selected thumbnail image.” Id. ¶ 156. Dr. Surati’s testimony (id. ¶¶ 155–157) is adequately supported by” slip op. at 38
Patent outcomesUS 9,552,376 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,552,376 - Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - PTAB · Jun 6, 2023 · IPR2023-00253 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood of prevailing on at least claim 11 over Ikeda and Puthuff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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) (2018). For the reasons discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition, and we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.) Pet. 13. 1 Congress amended § 103 when it passed the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287 (2011). Here, Petitioner asserts that the previous version of § 103 applies. Pet. 12. proposed level of ordinary skill in the art. Prelim. Resp. 6–7. In this Decision, we apply Petitioner’s proposed definition. If Patent Owner proposes a different level of ordinary skill in the art in its Response, the parties are encouraged to explain how the differences affect the obviousness analysis.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is unnecessary to construe any terms. Pet. 8. Patent Owner agrees. Prelim. Resp. 6. Patent Owner’s argument about the recited “determination” in claim 11 depends on an unstated construction. Id. at 13–14; see infra § II.C.3.b.i. Apart from our discussion about the meaning of the recited “determination” in Section II.C.3.b.i, we do not construe any terms.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage and on this record, we preliminarily determine that Petitioner describes the benefits of different approaches to detecting voicing activity in different situations. For example, Petitioner asserts that “Ikeda discloses the need for accurately determining periods when a desired signal (e.g., voicing activity) is present and periods when a desired signal is absent for an adaptive noise canceler to function optimally.” Pet. 32–33 (citing Ex. 1003, 3:32–54; Ex. 1002 ¶ 91). According to Petitioner, a person of ordinary skill in the art would have looked to other VAD methods, including Puthuff’s. Id. Petitioner argues that Puthuff would have improved voice-activity detection in noisy environments, in particular. Id. at 33 (citing testimony of Dr. Richard Stern. Ex. 1002 ¶ 91, cited in Pet. 33. On this record, Petitioner’s assertions are adequately supported. Pet. 32–33. The cited part of Puthuff, for instance, explains that its system improves “immunity to false triggering due to noisy environments.” Ex. 1004, 3:19–24, 6:6–10. We credit the testimony of Dr. Richard Stern, which is consistent with this teaching. Ex. 1002 ¶ 91. The Petition also explains how Ikeda’s and Puthuff’s systems are similar, and how both are concerned with solving the same problem. See Pet. 32–35.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091 - PTAB · Jun 1, 2023 · IPR2023-00251 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Amazon would prevail on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 24 (citing Stern Decl. ¶¶ 27–28). Patent Owner utilizes Petitioner’s proposed level of skill in the art “[f]or the purposes of this Preliminary Response only.” Prelim. Resp. 3. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 24–25; Prelim. Resp. 3. At this stage, we do not construe the claims, although in Section III.D.3.c) below the scope of “apply a varying linear transfer function” in the independent claims is considered.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“varying linear transfer function between the first and second microphone signals,” Petitioner relies on the disclosure in Gannot of a modified version of the Griffiths-Jim beamformer in which, in order to account for arbitrary acoustic paths, the blocking matrix uses ratios of varying transfer functions for the microphones. Pet. 33–35 (citing Ex. 1004, Figs. 3, 4, 1615–1620; Stern Decl. ¶¶ 105–106). Petitioner’s declarant testifies that one of ordinary skill would have been motivated to combine the teachings of Brandstein and Gannot because Gannot proposed a modification of the original Griffiths- Jim beamformer which is also the basis for the pertinent disclosure in Brandstein, which modification would have allowed for a more robust accommodation of situations where the microphone transfer functions were varying. Stern Decl. ¶¶ 106, 110. Finally, for the requirement that the signal processor is operative to “generate an output signal having noise content that is attenuated with respect to speech content,” Petitioner relies on the disclosure in Brandstein that for the output 𝑦(𝑘), “the target signal is enhanced and undesirable signals such as ambient noise and interferences are suppressed.” Pet. 36–37 (citing Ex. 1003, 88-89; Stern Decl. ¶ 109).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357
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.