- PTAB · Aug 11, 2023 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 21–30, 36, and 37 on all asserted grounds, finding a reasonable likelihood of success and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); 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”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’915 patent. We also decline to exercise our discretion to deny institution under § 325(d). Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1, 21–30, 36, and 37) of the ’915 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics states that “[p]reviously presented art . . . includes art provided to the Office by an applicant, such as on an Information Disclosure” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “The motivationto-combine analysis is a flexible one.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). And “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference teaches away ‘when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken’ in the claim.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017). “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Id. On this record, we are not persuaded that this is a teaching away for several reasons. First, the combination seeks to improve the operation of Armitage by incorporating Barone’s filter, not altering Barone. Thus, it is unclear how this alleged teaching away in Barone would discourage a person of ordinary skill from modifying Armitage. Second, on this record, we understand the statement as expressing a preference, and does not rise to the level of a teaching away. Thus, we are not persuaded that Barone teaches away from the combination. Accordingly, we find, on the current record, that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine Armitage with Barone. slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,915 - PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - PTAB · Jul 26, 2023 · IPR2023-00539 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–18 and 20–22 on all four § 103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“An ordinary meaning of “heuristic” is “involving or serving as an aid to learning, discovery, or problem-solving by experimental and especially trial-and-error methods.” Merriam-Webster.com at “http://www.merriam-webster.com/dictionary/heuristic” (accessed June 12, 2023) (Ex. 3001). Heuristics in the ’673 patent are (1) empirical data used to correlate sensed bearing adapter temperature to bearing temperature, (2) correlating sensed pressure in a trainline to brake pressure, (3) converting bolster/side frame displacement to load, (4) estimating a temperature of tank contents from inner jacket temperature, (5) using dynamic bearing data at an adapter with a fast Fourier transform (FFT) algorithm to isolate dominant modes, and amplify at rolling frequency to indicate faults, (6) converting radial acceleration to vehicle speed using dynamics and wheel and axle diameters, (7) using dynamic bearing data at an adapter and kurtosis in a time domain with a probability density function to indicate bearing damage, (8) applying a probability density function and kurtosis to dynamic data at a bearing adapter and other truck components to indicate track defects, (9) using a simple FFT algorithm with data from adapters to isolate known hunting frequencies or detect flange impacts to identify hunting, and (10) correlate wheel temperature to tread temperature using empirical data. Ex. 1001, 8:20–12:39 (chart of sensed parameter, sensor type, output, and heuristic). Interpreted in light of the ’673 patent specification, a “heuristic” is a rule, algorithm, function, formula, graphing function, or similar mechanism applied to data to assist in analyzing and/or interpreting the data.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or mechanical engineering or a related field with at least two years’ experience designing monitoring systems for railcar components, or monitoring systems for similar industrial equipment with rotating components,” and “[l]ess work experience could be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 45). 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Changes made to 35 U.S.C. § 103 in the AIA do not apply to any application for patent filed before March 16, 2013. Because the ’673 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of § 103. 3 US 2007/0152107 A1, published July 5, 2007 (Ex. 1005, “LeFebvre”). 4 US 2007/0208841 A1, published Sept. 6, 2007 (Ex. 1007, “Barone”). 5 US 2011/028540 A1, published Nov. 17, 2011 (Ex. 1006, “Armitage”). Patent Owner contends that a skilled artisan “is a person with at least a B.S. degree in electrical or computer science or a related field, with at least two years’ experience with sensing systems for railcars or similar industrial equipment, including familiarity with wireless networks and heuristics and statistical data analysis for failure prediction,” and “[l]ess work experience could be compensated for by a higher level of relevant education and vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 36–40). We adopt Patent Owner’s proposed level as more consistent with the ’673 patent and prior art, but our analysis is the same under either proposal.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We apply the following two-part framework under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential). To determine whether the Petition presents “the same or substantially the same” art or arguments previously presented to the Office, we consider the factors set forth in Becton, Dickinson.6 Id. at 7 n.8. Becton, Dickinson provides a non-exclusive set of factors to use in applying the framework of 35 U.S.C. § 325(d).” slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,981,673 - Siemens Mobility, Inc. / Ground Transportation Systems USA, Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Jul 14, 2023 · IPR2023-00452 · APJ Neil T Powell · IPR · Institution
The Board denied institution for claims 1–16 because Patent Owner effectively disclaimed all challenged claims, and no inter partes review may be instituted on disclaimed claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentInstitution denied
“In view of the foregoing, we find Patent Owner’s Disclaimer effective to disclaim claims 1–16 of the ’363 patent. Given this, and given 37 C.F.R. § 42.107(e)’s provision that “[n]o inter partes review will be instituted on disclaimed claims,” we agree with Patent Owner that its disclaimer of all challenged claims of the ’363 patent precludes institution of inter partes review in this proceeding. See Prelim. Resp. 3; Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential). III. ORDER For the reasons given, it is: ORDERED that the Petition is denied as to all challenged claims of the ’363 patent and no trial is instituted.” slip op. at 8
NonePatents in suitUS 10,778,363 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Jul 6, 2023 · IPR2023-00460 · APJ James P Calve · IPR · Institution
The Board denied institution on all challenged claims because Patent Owner properly disclaimed claims 1–20.
RulingsInstitution decision- Adverse judgmentOther
“that complies with § 1.321(a) and disclaims one or more claims in a patent, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A disclaimer must meet the following requirements: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in § 1.20(d). 37 C.F.R. § 1.321(a).” slip op. at 6
NonePatents in suitUS 10,737,709 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitutedPTAB · Jun 23, 2023 · IPR2023-00470 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–28 on all grounds in the petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the present disclosure describes a collision avoidance system that may be applied to a work gang of railroad vehicles, the technology and the concepts described herein may be utilized in other vehicles, applications and/or industries, for example, in industries where spacing, location and status is important. Some industries that may utilize the concepts described herein are (1) the construction industry, (2) the mining industry, (3) the airport industry, specifically on airport tarmacs. Ex. 1001, 29:30–38.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Andrews’ more than twenty years of experience with wireless technologies and transportation collision avoidance systems qualifies him as more than a person of ordinary skill in the art by both parties’ definitions, and Mr. Andrews’ supervision of skilled artisans has familiarized him with their level of skill. Ex. 1003 ¶ 28. Any lack of railway experience affects the weight we may give to his testimony. As discussed below, his testimony is consistent with the asserted prior art and the ’227 patent. As claimed, the CAS technology is simple enough that expert testimony is helpful, but not essential, to our understanding of the references and issues. See Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“comprises a “Transmitter” and a “Receiver.” Ex. 1006, 16:14–17:43. “In a transceiver embodiment, substantial economy can be achieved by sharing part or all of several of the functions of the transmitter 602 and receiver 702” and shared functions include “time base 718, precision timing generator 714, code source 722, [and] antenna 704.” Id. at 17:44–48 (emphasis added). No motivation is needed to combine transmitter 602 and receiver 702 to form a transceiver because Grisham teaches a transceiver embodiment as Petitioner asserts. Ex. 1006, 16:14–48, Figs. 6, 7; Pet. 12 (citing Ex. 1006, 17:44–46; Ex. 1003 ¶ 109 (same). Figure 21 mounts transmitting impulse radio unit 902 and receiving impulse radio unit 904 on each locomotive 1102, 2102 to function as transceivers that send and receive radio signals. See Ex. 1006, 23:33–24:29, 16:14–17:48.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,812,227 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitutedPTAB · Jun 23, 2023 · IPR2023-00468 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“This disclosure indicates the ’131 patent’s CAS technologies can be used with other vehicles and systems. This technology uses UWB and GPS sensors to determine vehicle location, speed, and separation distance for collision avoidance as discussed above. Ex. 1001, 3:31–4:60, 6:4–8:13.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“As discussed above, the ’131 patent itself indicates that its collision avoidance system, which is configured for trains and hyrail vehicles, can be applied in other industries, vehicles, and applications to control vehicles. Ex. 1001, 29:33–41 (mining, construction, airports). This disclosure is consistent with the prior art’s use of such technologies for trains, vehicles, trucks, planes, boats, ships, snowmobiles, and ATVs. Ex. 1016, 6; Ex. 1001, 3:46–63, Figs. 1C (hyrail vehicle), 2 (vehicle 204); Ex. 1005 ¶¶ 2–9, 55–59; Ex. 1006, 18:53–24:28, Figs. 9–22; Ex. 1008, Abstract, 209–213, Figs. 1–7. Mr. Andrews’ more than twenty years of experience with wireless technologies and transportation collision avoidance systems qualifies him as more than a person of ordinary skill in the art under both parties’ definitions, and Mr. Andrews’ supervision of skilled artisans has familiarized him with their level of skill. Ex. 1003 ¶ 28. Any lack of railway experience affects the weight we may give to his testimony. As discussed below, his testimony is consistent with the asserted prior art and the ’131 patent. As claimed, the CAS technology is simple enough that expert testimony is helpful, but not essential, to our understanding of the references and issues. See Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Grisham describes an “Exemplary Transceiver Implementation” that comprises a “Transmitter” and a “Receiver.” Ex. 1006, 16:14–17:43. “In a transceiver embodiment, substantial economy can be achieved by sharing part or all of several of the functions of the transmitter 602 and receiver 702” and shared functions include “time base 718, precision timing generator 714, code source 722, [and] antenna 704.” Id. at 17:44–48 (emphasis added). No motivation is needed to combine transmitter 602 and receiver 702 to form a transceiver because Grisham teaches a transceiver embodiment as Petitioner asserts. See Ex. 1006, 16:14–17:48; Pet. 12–13 (citing Ex. 1006, 17:44–46; Ex. 1003 ¶ 108 (citing Ex. 1006, 17:44–48). Figure 21 mounts transmitting impulse radio unit 902 and receiving impulse radio unit 904 on each locomotive 1102, 2102 to function as transceivers that send and receive radio signals. See Ex. 1006, 23:33–24:29, 16:14–17:48. Grisham describes mounting transmitting impulse radio unit 902 on locomotive 1102 to transmit impulse radio signal 910 to receiving impulse radio unit 904 on locomotive 2102 (Ex. 1006, 23:33–63) and states that “[i]t should be understood that the first locomotive 1102 can contain the same equipment as the second locomotive 2102 . . . and as such could be notified of the presence and speed of an oncoming second locomotive 2102” (id. at 24:24–29). Each locomotive 1102, 2102 has transmitting and receiving impulse radio units that function as transceivers to send and receive data as impulse radio signals 910 to notify operators on each locomotive of the presence and speed of the other locomotive to achieve substantial economy.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,043,131 - Apple Inc. v. R.N Nehushtan Trust Ltd.Institution deniedPTAB · Jun 14, 2023 · IPR2023-00231 · APJ Brent M Dougal · IPR · Institution
The Board denied institution on all claims because Apple did not show a reasonable likelihood of prevailing on any obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner does not identify a level of skill for a person of ordinary skill in the art. See generally Pet. Petitioner’s declarant asserts that a person of 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 one year of experience in wireless communication systems. Superior education could compensate for a deficiency in work experience, and vice-versa. Ex. 1003 ¶ 20. Patent Owner accepts this level of skill at this stage. Prelim. Resp. 6.” slip op. at 6
- BurdenNot shown unpatentable
“As correctly noted by Patent Owner, the Petition does not include any parenthetical discussions, or clarifying statements concerning the Shahbazi Provisional. Prelim. Resp. 12 (“The only potential support in the Petition is unexplained citations to the Shahbazi Provisional throughout the Ground 1 argument section”). Patent Owner argues that some of these citations are to as many as nine pages of the Shahbazi Provisional, again without any explanation. Id. at 13 (citing e.g., Pet. 16, 17, 23, 33, 34). We agree with Patent Owner that Petitioner has not satisfied its burden to show support for its positions with regard to the Shahbazi Provisional. By providing no discussion of the Shahbazi Provisional, the Petition essentially requires Patent Owner and the Board to guess which teachings in the Shahbazi Provisional the Petition is relying on. This does not satisfy our rules that require the Petition to “state the relevance of the evidence to the issues raised” and “identify how the . . . claim is unpatentable over the relevant evidence.” See Consolidated Trial Practice Guide6 at 42 (citing 37 C.F.R. § 42.104); see also 84 Fed. Reg. 64,280 (Nov. 21, 2019).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As will be discussed below, the Petition fails to address the claimed requirement that the data mode allows changing of settings comprising personal data. Rather, the Petition argues that Fam teaches a data mode including the changing of settings generally, but then only argues that the memory includes personal data, which are settings. The Petition does not argue that the references teach that the personal data is changeable in the data mode as required by the claim. The Petition relies on Fam for teaching an operational mode that allows reading and writing of data and changing of settings on a mobile phone, including Fam’s Figure 1, reproduced below. Pet. 54–56. Fam’s Figure 1 shows computer system 10 for programming a mobile phone 30, where the computer system is connected to the mobile phone over cable 24. Ex. 1005, 2:64–65, 3:3–6. Petitioner argues that when the programming mode that reads on the claimed data mode. Pet. 55. Petitioner further argues that “[t]he programming mode involves ‘allowing reading and writing of data’ into memory 34 since, upon completion of the programming mode, the mobile phone 30 becomes operational and/or functional.” Id. Fam teaches that when the computer and mobile phone are connected, the computer can program the mobile phone with configuration information 20 (22 on the mobile phone) that includes “operating data and parameters required for the mobile phone [ ] to function such as mobile phone operating software, network information, service provider information, hardware settings, and other similar information for supporting a wide variety of mobile phones.” Ex. 1005, 3:8–29. Turning to the claimed “data mode allowing . . . changing of settings” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,642,002 - Apple Inc. v. R.N Nehushtan Trust Ltd.Institution deniedPTAB · Jun 14, 2023 · IPR2023-00230 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that any challenged claim was unpatentable over Shahbazi or Fam, Geiger, and Shirai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
- Skill levelSkill level board ownDecided for patent owner
“Petitioner does not identify a level of skill for a person of ordinary skill in the art. See generally Pet. Petitioner’s declarant asserts that a person of 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 one year of experience in wireless communication systems. Superior education could compensate for a deficiency in work experience, and vice-versa. Ex. 1003 ¶ 20. Patent Owner accepts this level of skill at this stage. Prelim. Resp. 6.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require express construction. Pet. 5–6. Patent Owner does not propose any claim constructions, but argues that Petitioner’s arguments assume various claim constructions. PO Resp. 7–8. We determine that no terms need to be construed at this time. 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 7
- BurdenNot shown unpatentable
“In order for Shahbazi to be entitled to the filing date of the Shahbazi Provisional, Petitioner is required to show written description support in the Shahbazi Provisional for the invention disclosed in Shahbazi. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981); see also Dynamic Drinkware, 2 Shahbazi was filed on December 22, 2004. Ex. 1004, code (22). 3 The ’544 patent claims priority to a provisional application filed March 8, 2004 and is a continuation in a line of other continuations, where the earliest application was filed May 6, 2004. Ex. 1001, codes (60), (63). Thus, based on the chain of priority, Shahbazi itself is not prior art to the ’544 patent unless Shahbazi is entitled to the benefit of its provisional. Whether or not the ’544 patent is entitled to its claim of priority to its provisional does not impact this analysis. (2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with [35 U.S.C.] § 112, ¶ 1.”).4 In addition, Shahbazi only receives the benefit of the earlier priority date of the Shahbazi Provisional for that which is disclosed in the Shahbazi Provisional. See 35 U.S.C. § 119(e) (An application for patent is entitled to the filing date of a provisional application for the invention disclosed in the provisional application); see also Prelim. Resp. 11–12. In other words, Petitioner also needs to show that the portions of Shahbazi relied on as teaching aspects of the ’544 patent claims find support in the Shahbazi Provisional.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,635,544 - Siemens Mobility, Inc., Ground Transportation Systems USA, Inc., Humatics Corp., And Piper Networks, Inc. v. Metrom Rail, LLCInstitution deniedPTAB · Jun 13, 2023 · IPR2023-00439 · APJ Neil T Powell · IPR · Institution
The Board denied institution for all challenged claims because Patent Owner statutorily disclaimed claims 1–30.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” Thus, we shall not institute an inter partes review in this proceeding if Patent Owner has met the requirements of Rule 1.321(a) and disclaimed all challenged claims of the ’595 patent. Consistent with Patent Owner’s assertion, Office records reflect that Patent Owner filed its Disclaimer on April 18, 2023. Additionally, Patent Owner’s Disclaimer complies with Rule 1.321(a). Patent Owner’s Disclaimer is signed by “James Marchi, Chief Executive Officer” of “Metrom Rail, LLC.” Discl. 1. This meets Rule 1.321(a)(1)’s requirement that a disclaimer “[b]e signed by the patentee, or an attorney or agent of record.” Identifying the patent number as “10,179,595,” Patent Owner’s Disclaimer states “I hereby disclaim . . . complete claims . . . 1-30.” Discl. 1. This meets Rule 1.321(a)(2)’s requirement that a disclaimer “[i]dentify the patent and complete claim or claims, or term being disclaimed.” Patent Owner’s Disclaimer also states that “[t]he extent of my interest in said patent is . . . 100% Patent Owner (Reel 047644/Frame” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Additionally, by disclaiming claims 1–30 of the ’595 patent, Patent Owner does disclaim all challenged claims of the ’595 patent. Accordingly, we cannot institute an inter partes review of the ’595 patent. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential). III. ORDER For the reasons given, it is: ORDERED that the Petition is denied as to all challenged claims of the ’595 patent and no trial is instituted.” slip op. at 6
NonePatents in suitUS 10,179,595
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.