- PTAB · Sep 5, 2023 · IPR2023-00154 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li obviousness grounds and rejecting the § 315(b) time-bar argument.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“district court complaint does not trigger the time bar under § 315(b). Federal Rule of Civil Procedure 10 requires that “an exhibit to a pleading is a part of the pleading for all purposes.” Fed. R. Civ. P. 10(c); see also Rodriguez v. Fla. Dept. of Corrections, 748 F.3d 1073, 1076–77 (11th Cir. 2014) (“Because the Civil Rules require service of all pleadings, it follows that the exhibits to the pleading must also be served, regardless of whether they were filed at the same time.”); Sixta v. Thaler, 615 F.3d 569, 572 (5th Cir. 2010); Ringgold v. Burgett, Inc., No. 2:22-cv-00836, 2022 WL 8044117, at *2 (E.D. Cal. Oct. 17, 2022). Here, Exhibits A–D to the complaint filed in the district court are part of the complaint. See Ex. 1026.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 47). Patent Owner does not propose any claim construction in its Preliminary Response. On the present record, we do not discern a need to construe explicitly any claim language 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 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 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“given this laborious, non-graphical process for extracting a frame and creating a subsequent animation of the frame image in IMV6, a [person of ordinary skill in the art] would have been motivated to modify IMV6 (as described in IMU) by at least enabling a user to animate an already-extracted frame image using simpler and more intuitive graphical user commands. Id. at 68–69 (citing Ex. 1002 ¶ 168). Petitioner contends that “Okabe teaches simple and graphical user commands that a [person of ordinary skill in the art] would have found well-suited for implementing a GUI for at least animating an image (e.g., a frame image) in IMV6.” Id. at 69–70 (citing Ex. 1002 ¶ 170). According to Petitioner, “Okabe’s simple and graphical user commands thus enable creating looping animations ‘with less effort than with previous methods’ and ‘markedly reduces the user burden.’” Id. at 70 (citing Ex. 1009, 1–2; Ex. 1002 ¶ 170). Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify IMV6 to include Okabe’s simple and graphical user commands to make the animation process easier, graphical, and less time consuming.” Id. (citing Ex. 1002 ¶ 171).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,621,469 - PTAB · Sep 5, 2023 · IPR2023-00153 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li grounds; it found the petition timely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“addresses a situation where a pleading is deficient (where a party lacked standing to sue) and not situations, such as here, where the service itself was defective. See GoPro, Paper 38 at 12–15. GoPro requires us to consider “the date on which a complaint was served in accordance with the law.” Id. at 15 (emphasis added); Sur-reply 4 (quoting GoPro, Paper 38 at 15). In fact, GoPro points out that the Board has recognized that “a complaint improperly served does not trigger the § 315(b) time bar.” GoPro, Paper 38 at 14 (citing IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019)). In IpDatatel, the Board explained that “served” in § 315(b) requires compliance with Rule 4 of the Federal Rules of Civil Procedure, and that mere “notice” is not “legally effective” “service.” See IpDatatel, Paper 17 at 13–18 (rejecting patent owner’s argument as conflating “service” with “notice”) (citing Freedom Watch, Inc. v. Org. of the Petroleum Exporting Countries, 766 F.3d 74, 81 (D.C. Cir. 2014)); see also In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 14 at 10 (PTAB Sept. 6, 2019) (same).” slip op. at 11
- 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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 23–24). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation, and would have understood how to implement such systems.” Id. at 6. Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 1–4. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language 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 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 14
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,346,017 - PTAB · Aug 11, 2023 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 13, and 14 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Rousselle and Tsai.
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) (2021). 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 explained below, we institute an inter partes review of claims 1, 2, 4, 13, and 14 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Rousselle was presented previously to the Office. Turning to Tsai, we agree that there are similarities between Tsai’s outer retractable units (i.e., scissors-type linkages 2) and the X-shaped retractable units taught by Lee and Byun. Compare Ex. 1005, Figs. 1, 10, with Ex. 2003, Fig. 1, and Ex. 2004, Fig. 1A. There are also material differences, however, under Becton, Dickinson factor (a). Namely, the Examiner determined that both Lee and Byun disclosed the claimed central lock. Ex. 2002, 6–7. Tsai, however, discloses that its canopy supporting rods 3 are pivotally secured to head 7 and does not disclose a central lock. Ex. 1005, 7:15–17, Fig. 1. Petitioner thus relies on Rousselle, not Tsai, for teaching the claimed central lock. Pet. 33–48.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“subsequently granted.5 Prelim. Resp. 40. The stay was granted in response to “the Parties’ Joint Stipulation to Withdraw Plaintiff’s Opposition to Defendant Global Shade Corporation’s Motion to Stay and to Stay the Action Pending Inter Partes Review.” Ex. 3001, 2. The co-pending litigation is stayed pending final resolution of this proceeding, including any appeals therefrom. Id.” slip op. at 18
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,669,738 - Apotex Inc. v. Cellgene CorporationInstitutedPTAB · Jul 20, 2023 · IPR2023-00512 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 6–9, 11–28, 32–36, and 38–43 on all asserted grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that at least one of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent is unpatentable over the cited prior art. Our decision derives from our review of the preliminary record before us. Accordingly, we institute inter partes review of each challenged claim the ’628 patent on each of the grounds asserted by Petitioner. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that the Petition is granted and we institute inter partes review of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent based on the grounds asserted in the Petition.” slip op. at 53
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “[w]hen the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term.” Multiform Dessicants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). We agree with the parties that the ’628 patent expressly defines this term in stating “[t]he term ‘non-enteric-coated,’ when used herein, refers to a pharmaceutical composition, formulation, or dosage form that does not comprise a coating intended to release the active ingredient(s) beyond the stomach (e.g., in the intestine),” and we adopt this express definition herein with regard to “nonenteric coated tablet.”9 Ex. 1001, 11:42–48 (emphasis added).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“to, and sometimes associated with, but not identical to the claim term “subject”), which appears in claims 11, 12, 18–22, and 38–43, means “a human or other animal who received the recited pharmaceutical composition in connection with a test of the recited parameter.” Prelim. Resp. 18–19 (also asserting Petitioner does not appear to dispute this construction). We first note that the term “test subject” appears in the ’628 patent only in the claims. See generally Ex. 1001. However, we find Patent Owner’s definition comports with the Specification’s express definition of “subject,” a term the Specification appears to use synonymously with the claim term “test subject” and the word patient, and that Patent Owner’s definition adds that the subject received the pharmaceutical composition in connection with a test of the recited parameter, which we find to be a reasonable interpretation of the claim term “test subject,” in accordance with the plain language of the claims on their face, and as supported by the relevant portions of the Written Description that describe testing parameters relating to drug administration. Ex. 1001, 35:45–36:62, 67:61–81:48. We adopt Patent Owner’s definition herein.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). However, “‘[i]nherency . . . may not be established by probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (citations omitted, alterations in original). “The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.” Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,846,628 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCInstitutedPTAB · Jul 10, 2023 · IPR2023-00407 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claim 1 on all asserted grounds because Grounds 7 and 8 met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided 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_dis trict_court_litigation_memo_20220621_.pdf (“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- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The 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 offers a stipulation employing language nearly identical to that prescribed in the Interim Procedure: “Petitioner hereby stipulates that it will not pursue in the parallel district court proceeding the same grounds as in this Petition or any grounds that could have reasonably been raised as to claim 1 in this Petition.” Pet. 6–7.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe claims using the same standard applied in a district court. See 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’015 Patent pertains “would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows” and “would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (citing Ex. 1016 ¶ 17). Patent Owner states: “Solely for purposes of this Preliminary Response, Patent Owner does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art (‘POSA’).” Prelim. Resp. 2. For the purposes of the present Decision, we adopt Petitioner’s description of a person of ordinary skill in the art pertinent to the ’015 Patent. E.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner relies upon a portion of KSR in which the Supreme Court stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. Yet, in the analysis of Ground 2, Petitioner does not address the predicate factual determinations that the Supreme Court identifies — e.g., that there would have been “a design need or market pressure,” that there were “identified” and “predictable” solutions. Id. Therefore, based upon the present record, and for the purposes of the present Decision, Petitioner does not provide a sufficient reason for modifying Stanziale ’302, in order satisfy the identified limitation of claim 1. F.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,354,015 - Candela Corporation v. Nikolai TankovichInstitutedPTAB · Jun 8, 2023 · IPR2023-00234 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–28, finding a reasonable likelihood that the challenged claims would be unpatentable under the five asserted § 103 grounds.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“when no part of the distribution patterns of the two beams cross each other at the point of reference, identified above in Figure 2D–F as “in a tissue.” Id. As both claim 1 and claim 11 refer to tissue treatment, we interpret the point of reference for determining whether the beams overlap to be the point at which the beams first intersect the tissue being treated. This interpretation is supported by the diagrams in Figure 2 above and in the Specification. See, e.g., Ex. 1001, 1:67–2:4 (“The invention can avoid interference of the wavelengths by delivering the wavelengths simultaneously and in spatially separated and overlapping regions of the tissue being treated.”). In view of the above, we determine that the term “overlapping,” as used in the claims, refers to the crossing of the beam pattern at the point at which the beams intersect the tissue being treated.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“when no part of the distribution patterns of the two beams cross each other at the point of reference, identified above in Figure 2D–F as “in a tissue.” Id. As both claim 1 and claim 11 refer to tissue treatment, we interpret the point of reference for determining whether the beams overlap to be the point at which the beams first intersect the tissue being treated. This interpretation is supported by the diagrams in Figure 2 above and in the Specification. See, e.g., Ex. 1001, 1:67–2:4 (“The invention can avoid interference of the wavelengths by delivering the wavelengths simultaneously and in spatially separated and overlapping regions of the tissue being treated.”). In view of the above, we determine that the term “overlapping,” as used in the claims, refers to the crossing of the beam pattern at the point at which the beams intersect the tissue being treated.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Black discloses that its combined beam can be controlled to rotate the mirrors to “generate various different kinds of treatment patterns” and can “create any type of three-dimensional paths and treatment pattern.” See Ex. 1006 ¶¶ 61, 62; Ex. 1002 ¶ 69. On this record and at this stage, the ability to generate treatment patterns meets the limitations of the claims, which each require a pattern of “overlapping beams and non-overlapping beams. We credit Dr. Milner’s uncontroverted testimony that the ordinarily skilled artisan would have understood that a scanner could be used with or instead of a modulator to provide adjustability to one or more lasers, that the artisan would have been familiar with the control and programming of multiple scanners taught in Black, and that the artisan would have been able to implement these features in Hsia’s system without undue experimentation. Ex. 1002 ¶¶ 93, 95, 97, 98. Additionally, we credit Dr. Milner’s uncontroverted testimony that the ordinarily skilled artisan would have found it obvious from the teachings in Black to combine and scan multiple beams into a desired pattern, such as overlapping and non-overlapping in order to optimize treatment results and because the combination would have provided multiple potential benefits. Id. ¶¶ 98, 101, 112, 116, 118–128. We acknowledge Patent Owner’s argument that Dr. Milner’s testimony regarding the ordinary artisan’s motivation to combine references parrots the rationales identified and discussed in the ’481 patent. Prelim. Resp. 36–38. Dr. Milner, however, also cites disclosures in both Hsia and Black citing advantages of combined beams including improved treatment efficacy, improved healing, the ability to treat simultaneously at multiple depths, and reduction in the number of required treatments. Ex. 1002 ¶¶ 117–119. “[T]he motivation-to-combine analysis is a flexible one. Any 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.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (citing KSR Int’l, 550 U.S. at 420 (alterations, emphasis, and internal quotation marks omitted).” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Black discloses that its combined beam can be controlled to rotate the mirrors to “generate various different kinds of treatment patterns” and can “create any type of three-dimensional paths and treatment pattern.” See Ex. 1006 ¶¶ 61, 62; Ex. 1002 ¶ 69. On this record and at this stage, the ability to generate treatment patterns meets the limitations of the claims, which each require a pattern of “overlapping beams and non-overlapping beams. We credit Dr. Milner’s uncontroverted testimony that the ordinarily skilled artisan would have understood that a scanner could be used with or instead of a modulator to provide adjustability to one or more lasers, that the artisan would have been familiar with the control and programming of multiple scanners taught in Black, and that the artisan would have been able to implement these features in Hsia’s system without undue experimentation. Ex. 1002 ¶¶ 93, 95, 97, 98. Additionally, we credit Dr. Milner’s uncontroverted testimony that the ordinarily skilled artisan would have found it obvious from the teachings in Black to combine and scan multiple beams into a desired pattern, such as overlapping and non-overlapping in order to optimize treatment results and because the combination would have provided multiple potential benefits. Id. ¶¶ 98, 101, 112, 116, 118–128. We acknowledge Patent Owner’s argument that Dr. Milner’s testimony regarding the ordinary artisan’s motivation to combine references parrots the rationales identified and discussed in the ’481 patent. Prelim. Resp. 36–38. Dr. Milner, however, also cites disclosures in both Hsia and Black citing advantages of combined beams including improved treatment efficacy, improved healing, the ability to treat simultaneously at multiple depths, and reduction in the number of required treatments. Ex. 1002 ¶¶ 117–119. “[T]he motivation-to-combine analysis is a flexible one. Any 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.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (citing KSR Int’l, 550 U.S. at 420 (alterations, emphasis, and internal quotation marks omitted).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,675,481 - PTAB · Apr 24, 2023 · IPR2022-01504 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that each challenged claim would have been obvious over the cited combinations.
RulingsInstitution decision- Other 314aDecided for petitioner
“trial. See 35 U.S.C. § 314(a) (authorizing institution of a trial under particular circumstances, but not requiring institution under any circumstances); 37 C.F.R. § 42.208(a) (stating “the Board will authorize the review to proceed”) (emphasis added); cf. Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an [inter partes review] proceeding”). Petitioner anticipates potential discretionary denial issues under 35 U.S.C. §§ 314(a) and 325(d). Pet. 70–73. On this record, we do not exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, Petitioner has sufficiently shown that the combination of Dua and Rosener teaches all the limitations of claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Relying on the Kyriakakis Declaration Petitioner alleges a person having ordinary skill in the art “would have had at least a bachelor’s degree in in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in wireless (citing Ex. 1002 ¶ 23). On this record, we adopt Petitioner’s proposal because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’852 patent.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner, asserts construction is unnecessary and does not propose any term for construction. Pet. 11 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). On this record, no disputed term is identified. We preliminarily determine that no term requires construction to resolve this dispute. See Vivid Techs., 200 F.3d at 803. Accordingly, we proceed on the plain and ordinary meaning of the claim terms to a person of ordinary skill in the art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,848,852 - PTAB · Apr 24, 2023 · IPR2022-01503 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–26 and all petitioned grounds after finding a reasonable likelihood that claim 1 was unpatentable over Rosener, Dua, Price, and Nakagawa.
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) (2021). 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 explained below, we institute an inter partes review of claims 1‒26 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the Kyriakakis Declaration, Petitioner alleges a person having ordinary skill in the art “would have had at least a bachelor’s degree in . . . an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in wireless communications across short-distance or local-area networks.” Pet. 9 (citing Ex. 1002 ¶ 23). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts construction is unnecessary and does not propose any term for construction. Pet. 9–10 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be the controversy.”)). On the present record, we do not discern a need to construe explicitly any claim language 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 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., 200 F.3d at 803).” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelNot reached
“F. Collateral Estoppel Relying on the final written decisions that have been issued in IPR2021-00297, IPR2021-00381, and IPR2021-00305 (Exs. 1011–1013), Petitioner asserts that “while unnecessary to find the challenged claims unpatentable, Patent Owner is collaterally estopped from disputing that the cited prior art teaches the limitations” that the Board found the references to showing, without application of collateral estoppel, is sufficient at this stage of the proceeding, we do not reach the collateral estoppel arguments. However, we do note that, unlike MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018), which Petitioner relies on, this case involves different patents. Also, different parties and different prior art combinations are asserted. See Pet. 10–12. We question, but do not decide, how collateral estoppel applies here and leave the issue, if it becomes relevant, to trial. IV. CONCLUSION After considering the evidence and arguments of record, we determine” slip op. at 25
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,757,498 - PTAB · Apr 12, 2023 · IPR2022-01563 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 1–14 because Petitioner showed a reasonable likelihood that claims 1–14 would have been obvious over Yong and Xavier.
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) (2021). 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 the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the ground set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3. Additionally, KIPO Yong tends to show that Yong constitutes an authentic version of Korean Publication No. 10-2007-0087811. Yong’s and KIPO Yong’s Figures appear substantially the same. Compare Ex. 1009, 42–48, with Ex. 2001, 28–33. Additionally, the content starting on page 2 of Yong, where Patent Owner contends “claims appear to be present,” closely resembles the content starting on page 11 of KIPO Yong, which Patent Owner posits “may be claims.” Prelim. Resp. 22, 29; Ex. 1009, 2–30; Ex. 2001, 11–27. Consistent with Patent Owner’s observations, these portions of Yong and KIPO Yong appear to present claims. Specifically, these sections of Yong and KIPO Yong each appear to present exactly 140 claims. Ex. 1009, 2–30; Ex. 2001, 11–27. These sections share a number of other similarities, also. For example, in both Yong and KIPO Yong, in the midst of Korean characters, what appears to be claim 69 recites “POS.” Ex. 1009, 16; Ex. 2001, 19. Similar commonalities appear numerous places within these portions of Yong and KIPO Yong. Ex. 1009, 2–30; Ex. 2001, 11–27. The similarities between Yong and KIPO Yong tend to show that Yong is an authentic version of Korean Publication No. 10-2007-0087811 and has the same substantive content as KIPO Yong, just formatted and arranged differently. This is not significantly undermined by Patent Owner’s observations about certain differences between the documents, especially in the absence of a translation of KIPO Yong, which would have facilitated comparing the documents’ content. Indeed, considering Patent Owner’s omission of a translation of KIPO Yong, Patent Owner’s complaints of prejudice and “Petitioner’s hide-the-ball tactics” ring hollow. Prelim. Sur-reply 2, 5. Although we agree with Patent Owner that Petitioner has not yet met the requirements of Rule 42.63(b) for the translation of Yong, we do not find it warranted to deny institution on this basis. Instead, we treat Patent’s Owner’s pre-institution arguments that Petitioner fails to comply with Rule 42.63(b) as evidentiary objections. If Patent Owner wishes to preserve its objections, Patent Owner must formally object to Petitioner’s evidence after institution of inter partes review by this Decision.” slip op. at 16
- Parallel petitionsDecided for petitioner
“As discussed above, Petitioner filed four petitions challenging the ’435 patent on the same day, including this proceeding, IPR2022-01563, as well as IPR2022-01528, IPR2022-01561, and IPR2022-01564. In this proceeding, IPR2022-01563, and in IPR2022-01561 and IPR2022-01564, Petitioner challenges claims 1–14 of the ’435 patent over various prior art grounds. Pet. 11; Not. 2. In IPR2022-01528, Petitioner challenges claims 15–19 of the ’435 patent over various prior art grounds. Not. 2. Pursuant to the Board’s Consolidated Trial Practice Guide (Nov. 2019) (“TPG”),3 Petitioner’s Notice provides a ranking of the four petitions in the order in which Petitioner wishes the Board to consider them on the merits and a succinct explanation of the differences between the Petitions. See TPG 59–60; Not. 1–5. Petitioner ranks the instant Petition as “3,” the petition in IPR2022-01528 as “1,” the petition in IPR2022-01561 as “2,” and the petition in IPR2022-01564 as “4.” Not. 2–5. Petitioner, however, contends that “all four Petitions merit institution” because “[a]ll four Petitions present significant material differences which are not redundant and which demonstrate different substantive bases for rendering obvious or for showing anticipation of each of the challenged claims of the ’435 Patent,” and “[d]ue to word count limitations, Petitioner 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. was not able to present all these grounds in a single petition.” Id. at 1, 3. Petitioner elaborates that 1) the claims of the ’435 Patent comprise over 1,500 words, such that to cover a plurality of grounds in one petition covering all the claims would use at least twenty percent of the 14,000-word petition limit; and 2) Patent Owner has asserted 15 of the 19 claims of the patent in the pending district court litigation (see Ex. 1026). Id. at 2. Patent Owner argues that “the panel should, at most, address the -01528 petition on the merits, as petitioner requested, and discretionarily deny the other three petitions under § 314(a).” Prelim. Resp. 3–4. Regarding the ’435 patent’s claims’ length, Patent Owner argues that “the ’435 Patent claims is indicative of the quality of examination, rather than an excuse for the piling on that Petitioner exhibits in these challenges.” Id. at 6. Under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“3. Discussion In asserting obviousness of claims 1–14 over Yong and Xavier, Petitioner argues that Yong discloses many of the challenged claims’ limitations. Pet. 13–43. For example, Petitioner relies primarily on Yong as allegedly disclosing claim 1’s limitations. Id. at 13–26. Petitioner relies on Xavier as “teach[ing] the use of a session between a mobile phone and se[r]ver in a self-checkout system.” Id. at 15. Petitioner argues that “[h]aving reviewed Xavier, a [person of ordinary skill in the art] would have been motivated to add the session handling of Xavier to Yong.” Id. According to Petitioner, “[a person of ordinary skill in the art] would have understood that a session manager would have been necessary to manage the communications between the mobile communication terminal 100 and the store POS server 200, the commercial transaction server 400 and the payment server 500.” Id. At this stage, aside from the arguments discussed above in Section II.C.1 that we should not consider Yong as prior art, Patent Owner does not dispute the merits of Petitioner’s challenge to claims 1–14. Having reviewed Petitioner’s arguments and evidence, we determine Petitioner has demonstrated a reasonable likelihood of establishing that claims 1–14 would have been obvious over Yong and Xavier. Pet. 1–43.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
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) (2021). 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 the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435
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.