- Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. 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 is 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
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00848 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 18, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 70–73, 77, 78, 81, 82, 85, 86, and 88–91 on both asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 all of the challenged claims of the ’770 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Here, our consideration of relevant factors including the seven Becton, Dickinson factors does not favor discretionary denial. In particular, the reexamination examiner allowed new claims based on prior art not disclosing an LED chip configured to output light at greater than about 40 mW as follows. Pet. 14. In particular, the Examiner distinguishes claim 18 from the prior art as follows: Proposed new claim 18, from which all of the other proposed new claims depend directly or indirectly, includes a feature requiring the semiconductor chip to be “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts. Ex. 1005, 7/9/2014 Notice of Intent to Issue Ex Parte Reexamination Certificate; see also Pet. 1 (explaining same). In the Petition, Petitioner persuasively establishes for purposes of institution that Krames teaches an LED chip that achieves “[a] power output of over 170 mW.” Pet. 53 (quoting Ex. 1008, 10). As explained herein when addressing the merits of Petitioner’s asserted grounds, Petitioner also provides persuasive argument why a person of skill in the art would have reason to combine Krames’s teachings with the teachings of the other cited references with a reasonable expectation of success. Pet. 26–31. Given these circumstances, the seven Becton, Dickinson factors weigh” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts: As of the ’770 Patent’s claimed priority date (August 24, 2001), a POSITA would have had at least a bachelor’s degree in an engineering discipline with coursework in semiconductors and/or optoelectronics, and three or more years of experience working in the semiconductor and/or optoelectronics fields. Less work experience may be compensated by a higher level of education with the foregoing coursework. Pet. 19–20 (citing Ex. 1006 ¶ 34). Patent Owner does not dispute Petitioner’s definition of one of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Petitioner’s description.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 69). Patent Owner asserts that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claims because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 1–4; Prelim. Sur-reply 1–3. Patent Owner further asserts that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–111. Patent Owner does not persuasively dispute Petitioner’s position. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.InstitutedPTAB · Oct 19, 2022 · IPR2022-00847 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all three § 103 grounds.
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.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” The Memorandum states that “the precedential import of Fintiv is limited to the facts of that case.” Memorandum at 2. The Memorandum also states that “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.” Id. at 3. The Memorandum further states that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5. Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Here, Petitioner stipulates that they “will not assert, in the parallel district court proceeding, that any Challenged Claim is invalid based on (a) the same grounds as those in the Petition, or (b) any grounds that reasonably could have been raised in the Petition.” Pet. Reply 7. The stipulation eliminates the possibility of Petitioner asserting duplicative invalidity grounds in both the Petition and in District Court. The Director’s guidance that “PTAB will not discretionarily deny institution” in view of a stipulation” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he terms in the Challenged Claims should receive their ordinary and customary meaning as understood by a POSITA in the context of the patent specification and prosecution history.” Pet. 19 (citing Ex. 1006 ¶ 71). Petitioner states that “Patent Owner has taken a position as to the scope of certain claim terms through infringement contentions in the district court case.” Id. Specifically, Petitioner avers that Patent Owner proposes claim constructions for the term “reflective layers” and contends that grounds 1 and 3 demonstrate invalidity even under Patent Owner’s interpretation of “reflective layers.” Id. at 20 (citing Ex. 1017, 22– 23; Ex. 1006 ¶ 72). Patent Owner contends that the petition fails to show a reasonable likelihood that Petitioner would prevail for at least one claim because Petitioner has not identified how the challenged claims are to be construed or how the asserted references apply to any construed claim. Prelim. Resp. 4–10; Prelim. Sur-reply 1–3. Patent Owner further contends that the petition violates 37 C.F.R. § 42.104(b)(3) because it does not, for each claim challenged, identify “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” Prelim. Sur-reply 1. In particular, Patent Owner emphasizes that two district courts have construed various terms of the ’961 Patent and that Petitioner does not address these constructions. Prelim. Resp. 4–10. Patent Owner’s argument does not persuade us that institution is inappropriate here. Petitioner identified how each challenged claim is to be construed by asserting that “ordinary and customary meaning” applies. Pet. 19. Petitioner also explained how each challenged claim is unpatentable. Id. at 32–30. Moreover, Petitioner explains that its challenges are sufficient under the District Court’s claim constructions. Pet. Reply 4. Patent Owner does not persuasively identify how the District Court claim constructions undermine Petitioner’s challenges and do not persuasively explain how the assert art fails to disclose or suggest claim 21’s recitations. Under these circumstances, the petition satisfies 37 C.F.R. § 42.104(b)(3). As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on ordinary and customary meaning. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). We also further address claim 8’s recitation of “reflective layers” when addressing that claim recitation in the context of the prior art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also asserts that a person of skill in the art would have had reason to combine the teachings of Allen and Krames with Begemann. Pet. 27–32. Based on the current record, we also determine that Petitioner’s assertion is persuasive and supported by evidence. Begemann teaches the use of LED chips for its LED lamp, but it does not describe the details of its LED chips. Ex. 1007, 1:1–4, 4:21–22. A person of skill in the art seeking to implement Begemann’s teachings would have looked to other references, 9 Petitioner mistakenly cites 3:32–35 (Pet. 40), but the quote is easily located on the next page. such as Krames and Allen, to learn more about the structure of high-power LED chips. Ex. 1006 ¶¶ 91–94. Krames teaches a chip that appears suitable for use in Begemann’s package. Pet. 29–30. Krames teaches that its chip “should be able to compete more favorably with conventional lighting technologies in many applications.” Ex. 1008, 6. This matches Begemann’s LED Lamps. Ex. 1007, 2:3–5. A person of ordinary skill in the art would have had a high expectation of success in mounting Krames’s chips within Begemann given, for example, the heat dissipation Begemann teaches (as explained above). Ex. 1006 ¶ 93. On the present record, Petitioner adequately establishes that a person of ordinary skill in the art would have reason to implement Krames’s chip design with Begemann with a high expectation of success. As to Allen, Begemann teaches a “white LED” for at least one embodiment. Pet. 31 (quoting Ex. 1007, 3:6–9). Krames teaches conversion of blue light into white “via phosphors” and Allen teaches that “blue dies with phosphorescent coating” may be used. Ex. 1008, 11; Ex. 1011, 4:11– 12; Ex. 1006 ¶¶ 95–96. Therefore, based on this current record, Petitioner’s position that a person of skill in the art would have combined the teachings of Begemann, Allen, and Krames to reach claim 1’s recited coating is persuasive and supported by evidence.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · Aug 24, 2022 · IPR2022-00399 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 on all proposed grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation at 4–5.3 “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “the merits of the Petition are ‘compelling.’” Prelim. Reply 1. For the reasons explained below, we determine that the merits of Petitioner’s challenges to be compelling, and, therefore, we decline to exercise discretion under § 314(a) to deny institution. Additionally, even if we were to consider the Fintiv factors in detail, we would not exercise discretion to deny institution. As noted above, the district court litigation between the parties was recently transferred to the U.S. District Court for the Southern District of Texas. See Ex. 1205. That Court has scheduled an initial pretrial conference for September 22, 2022, during which the Court will set a schedule for initial preparation and enter a scheduling order for the proceeding. See Ex. 1204, 1–2. Thus, any argument that we should deny institution based on the timing of the district court litigation would be speculative at best. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’049 patent is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See SAS, 138 S. Ct. at 1359–60; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); CTPG 64 (“The Board will not institute on fewer than all claims or all challenges in a petition.”). IV. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 of the ’049 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 49
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proffers a definition for any claim term. Pet. 2; Prelim. Resp. 2. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules. slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person 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). In determining the level of ordinary skill in the art, we may consider certain factors, 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.” Id. (internal quotation marks and citation omitted). Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have a “range of qualifications” including “a bachelor’s degree in mechanical or chemical engineering and five years of work experience in the field of mechanical systems, motors, pumps, and/or oil field services.” Pet. 7 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not contest Petitioner’s proposed definition or offer a definition of its own. Prelim. Resp. 2. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,395,049 - Apple Inc. v. Koss Corp.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00188 · APJ Karl D Easthom · IPR · Institution
The Board denied institution of review of claims 1-22, 32-41, 47, and 49-62 under § 314(a), applying the General Plastic factors to Apple’s third petition; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“(‘Schrager’)—the primary reference that forms the basis of Grounds 1A–1D of the [’]680 Proceeding—before Bose filed IPR2021-00612 (a petition against related U.S. Patent No. 10,206,025) a day later on March 3, 2021.” Mot. 7. This contention does not specifically address what Apple knew or should have known at the time of filing of its second petition, which Apple filed after the filing of the Bose ’680 petition and after March 3, 2021. See id. In any event, Apple appears to admit that it knew of Schrader prior to filing its second petition on March 23, 2021. See id. In addition, Patent Owner introduces evidence that Apple knew or should have known about Schrager prior to filing of its first petition. See Prelim. Resp. 15 (showing “Petitioner had been aware of Schrager since at least 2014” (citing Ex. 2003; Ex. 2004) and identifying “over 100 times” Apple “had cited Schrager to the Office . . . in its own patent applications” (citing Ex. 2002)); 4 (citing Ex. 2002, 10–15 (web document listing Apple as assignee on multiple patents citing Schrager between 2014 and 2018)); Ex. 2003 (Information Disclosure Statement (IDS) filed by Apple listing Schrager in 2014); Ex. 2004 (IDS filed by Apple listing Schrager in 2016). Accordingly, this second General Plastic factor weighs in favor of exercising discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, and following Uniloc, we exercise discretion under 35 U.S.C. § 314(a) and deny institution.” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 15
Discretionary denialPatents in suitUS 10,469,934 - PTAB · Apr 13, 2022 · IPR2022-00229 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution for claims 1 and 46 under § 314(a), finding that the Fintiv factors and parallel litigation supported discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court has stayed or may stay the proceeding pending inter partes review. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” See Fintiv, Paper 11 at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that 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.” Upon consideration of the evidence and arguments in the Petition as well as the evidence and arguments in the Preliminary Response, for the reasons below and based on the particular facts of this case, we exercise our discretion under 35 U.S.C. § 314(a) and decline to institute inter partes review of the ’040 patent.” slip op. at 2
Discretionary denialPatents in suitUS 7,464,040 - Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentablePTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28
Patent outcomesUS 7,353,555 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,353,555 - Apple Inc. v. Koss CorporationInstitution deniedPTAB · Apr 4, 2022 · IPR2022-00053 · APJ Norman H Beamer · IPR · Institution
The Board denied institution under § 314(a) based on the General Plastic factors and denied Apple’s motion to join IPR2021-00612.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“C. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, we conclude that the factors weigh in favor of denying institution of the proceeding. On balance and in view of the policy goals articulated in General Plastic, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we are exercising discretion to deny institution under Section 314, we deny Petitioner’s Motion for Joinder.” slip op. at 14
Discretionary denialPatents in suitUS 10,206,025 - Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046
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.