- PTAB · Nov 7, 2024 · IPR2024-00604 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1–8, 15–22, and 29 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim based on the Rusert grounds.
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) (2024). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses.” slip op. at 63
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5, which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 67
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution deniedPTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution
Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,733,773 - Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution deniedPTAB · Oct 25, 2024 · IPR2024-00967 · APJ William V Saindon · IPR · Institution
The Board denied institution because Petitioner did not show why a skilled artisan would have combined Niterra’s wire-length features with EZBRUSH’s clothing design software.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The expert provides no citation for his “smooth seam” rationale. Moreover, Petitioner’s expert, who has extensive knowledge in CAD drawing systems (e.g., id. ¶ 3), does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statement, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “smooth seam” rationale no weight. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“asserts that it would have been obvious to add these features from Niterra’s circuit board designer into the clothing designer of EZBRUSH. Pet. 45–50. Petitioner asserts that the reason to do so is because “it would have been desirable to select the sewing segments to be equal in length when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material.” Id. at 45 (citing Ex. 1003 ¶ 64). Petitioner then goes on to explain various benefits from adding these “smooth seam” features. Id. at 46–50. Patent Owner argues that “[Petitioner’s] rationale is completely rooted in hindsight” because nothing in the prior art describes a desire to seek a smooth seam. Prelim. Resp. 69. Turning back to the Petition, we see that Petitioner’s “smooth seam” rationale is underpinned by a citation to its expert declaration. Pet. 45 (citing Ex. 1003 ¶ 64). The expert, in turn, repeats the language from the Petition, but provides no explanation as to the underlying facts or data on which his opinion is based. He states: A [person of ordinary skill in the art] would have known that when using the resulting CAD system (EZBRUSH as modified by Corel and Thoemmes (detailed above)) to digitally “sew” two garment patterns together, selecting the sewing segments to be equal in length would have been desirable when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material. Ex. 1003 ¶ 64.” slip op. at 9
- Skill levelNot reached
“B. Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art as of the Critical Date (“POSITA”) would have had a minimum of a bachelor’s degree in an engineering, computer science, graphic design, or a related field plus 2–3 years of work and/or research experience in the field of computer aided design (CAD) software. [Ex. ]1003, ¶23. Graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. Pet. 21. Patent Owner proposes a different standard: A [person of ordinary skill in the art] to which the ’355 Patent pertains would have had a minimum of a bachelor’s degree in mechanical engineering, textile engineering, computer engineering, computer science, graphic design, or an equivalent degree, with at least 2–3 years of experience in software design for the creation of digital or virtual clothing. EX2001, ¶56. Prelim. Resp. 33. Notably, Patent Owner argues that the level of ordinary skill in the art includes experience specific to digital or virtual clothing and that Petitioner has omitted this critical aspect. Id. at 32. We need not define explicitly the level of ordinary skill in the art because Petitioner would fail to meet its evidentiary burden regardless of the definition of the level of skill adopted.” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,410,355 - PTAB · Oct 25, 2024 · IPR2024-00980 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving them obvious over Grinspun and Graphicxtras.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims of the ’448 Patent. We thus determine not to institute an inter partes review of any of the challenged claims on any of the grounds alleged in the Petition. A. Real Parties in Interest” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that no claim terms need to be construed for the purposes of a Decision on Institution, but disagree as to whether the preamble of method claim 1 is limiting. Petitioner argues that it is not, while Patent Owner argues that statements of intended purpose in the preamble to a method claim are generally construed as limiting. Pet. 31–32 (citing Arctic Cat Inc. v. GEP Power Prods., 919 F.3d 1320, 1328–1330 (Fed. Cir. 2019)); Prelim. Resp. 19 (quoting Eli Lilly and Co. v. Teva Pharma. Int’l GmbH, 8 F.4th 1331, 1340 (Fed Cir. 2021)). We determine that we do not need to resolve this potential claim construction dispute between the parties. See, e.g., Nidec Motor Corp. v. 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)). For the reasons discussed below, even if we adopt Petitioner’s position that the preamble of claim 1 is not limiting, Petitioner still has not established a reasonable likelihood of success regarding its challenge to claim 1.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had “a minimum of a bachelor’s degree in an engineering, computer science, graphic design, or a related field plus 2–3 years of work and/or research experience in the field of computer aided design (CAD) software.” Pet. 12. Petitioner asserts that “[g]raduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner largely agrees with Petitioner’s proposal, but argues that the relevant experience would have had to have been in “creating computer programs for virtual or digital clothing design” because general CAD software is not suitable for the purposes of virtual clothing design. Prelim. Resp. 18–19. We need not determine which definition is more consistent with the ’448 Patent and the asserted prior art. We have applied Petitioner’s definition in our analysis below. We determine that even under Petitioner’s definition of the level of ordinary skill in the art, Petitioner has not established a reasonable likelihood of success with respect to any of the claims challenged in the Petition, for the reasons discussed below. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“First, Petitioner has not sufficiently shown that either Grinspun or Graphicxtras teach taking measurements “of” a two-dimensional pattern, as described in the preamble of claim 1. See Prelim. Resp. 20–23. Grinspun provides a 2D pattern in its Design Window 110, but does not measure any part of the 2D pattern. Id. at 20; Ex. 1004 at 17, 37–38, Fig. 1; see also Ex. 2001 ¶¶ 76–77 (Govindaraj Decl.). Graphicxtras teaches taking horizontal or vertical measurements between bounding boxes, but does not measure the distance between the actual outlines of the pattern pieces. Ex. 1005 (Graphicxtras); see Ex. 2001 ¶¶ 79–81. Even if the preamble is not considered to be limiting, the fact remains that neither reference discloses measuring a distance within a pattern piece, which is required by the claim language “determining a length of a line segment using the points . . . responsive to determining that the points are located in different pattern pieces[.]” Ex. 1001 at 18:3–4 (emphasis added); see Ex. 2001 ¶¶ 84–85. Second, Petitioner has not shown that either reference, alone or in combination, can determine whether two points are on the same pattern piece or different pattern pieces by affirmatively examining “attributes of areas” in which the points are located. Prelim. Resp. 27–29 (citing Ex. 2001 ¶¶ 87–90). The ’448 Specification indicates that a “measuring apparatus may determine that areas to which the two points A and B belong correspond to different pattern pieces based on the data structure corresponding to each of the two points A and B.” Ex. 1001 at 7:25–40. The data structure corresponding to each of the points may store information corresponding to each of the points in the form of a linked list, a tree, or a table, for example. The information corresponding to each of the points may include, for example, identification information of a pattern piece in which each of the points is positioned, identification of a line in a pattern piece in which each of the points is positioned, a coordinate of a point on a line of a pattern piece, and the like. Id. at 6:63–7:4. This is reflected in claim 1, which contains the limitation “determining a length of a line segment using the points based on the determined attributes of the areas, the determined length of the line segment changed to account for separation between the pattern pieces responsive to determining that the points are located in different pattern pieces[.]” Ex. 1001 at 17:66–18:4. The Grinspun-Graphicxtras combination does not do this. Rather, in the proposed combination the two points A and B are always on the edges of two different pattern pieces, and there is no disclosure of a set of data structures that would enable the proposed software to determine the location of the points in relation to the 2D pattern pieces depicted. Prelim. Resp. 27–29 (citing Ex. 2001 ¶ 90); see Pet. 35 (annotating Figure 1 of Ex. 1004). Third, because the line segment in the proposed combination is always between the edges of two different pattern pieces, the combination does not determine the “length of a line segment using the points based on the determined attributes of the areas” associated with the two points. Prelim. Resp. 41–42 (citing Ex. 2001 ¶¶ 91–93); Ex. 1001 at 17:62–65 (emphasis added); see also Pet. 40, 42, 44 (further annotating Figure 1 of Ex. 1004). Fourth, Petitioner misinterprets the claim language “the determined length of the line segment changed to account for separation between the pattern pieces” and does not does not even address the remainder of that claim element, “responsive to determining that the points are located in different pattern pieces.” See Ex. 1001 at 18:1–4 (emphasis added). This language does not mean that the user manually changes the length of the line segment by moving the pattern pieces. See Pet. 40–44. It means that the portion of the line segment that is in the empty space between the pattern pieces is subtracted, as shown in Figure 4 of the ’448 Patent, in order to determine the measurement of a portion of the 3D clothing to be created from the 2D pattern. Prelim. Resp. 40–41 (citing Ex. 2001 ¶¶ 94–95). We agree with and adopt the explanation of Patent Owner’s expert declarant, Dr. Govindaraj that: [T]he ’448 teaches repeatedly and the claims require that the patterns are fixed relative to one another, that the selected points are fixed, and that the line segments are fixed. The entire purpose of the claimed invention is to measure the length of a line segment in response to determining that the points are located in different pattern pieces, and then accounting for the “white space” or “separation between” the two patterns. Ex. 2001 ¶ 95. Patent Owner raises additional arguments as to why claim 1 would not” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,222,448 - PTAB · Oct 25, 2024 · IPR2024-00572 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 6–9, 11, 15, 21, and 23, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Other 314aInstitution denied discretionary otherDecided for petitioner
“IV. DISCRETIONARY DENIAL UNDER § 314(a) Under § 314(a), the Director possesses “broad discretion” in deciding” slip op. at 82
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Although VCEG-N52 was previously presented to the Office, the Examiner did not consider whether the challenged claims would have been obvious over VCEG-N52 and Sriram. See Ex. 1002, 108–15, 146–60, 162–69, 332–38, 359–67, 388–98. Patent Owner does not contend otherwise. Prelim. Resp. 50. For the “same or substantially the same arguments” inquiry under the Advanced Bionics framework, Patent Owner does not contend that any arguments in the Petition parallel any arguments made during prosecution. Prelim. Resp. 50. Accordingly, we determine that Petitioner relies on different art and different arguments than the art and arguments previously presented to the Office. Although Au was previously presented to the Office, only one of Petitioner’s four patentability challenges relies on Au. See supra § II.F, III.E–III.H. Hence, § 325(d) is not sufficiently implicated by granting institution such that doing so would undermine § 325(d)’s statutory purpose to avoid duplicative effort by the Office. Because we determine that Petitioner relies on different art and different arguments than the art and arguments previously presented to the Office, we do not address “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, Paper 6 at 8. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 86
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,724,818 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution deniedPTAB · Oct 10, 2024 · IPR2024-00040 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable, principally because Orr’s trigger circuit was not shown to be a processor.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“patent. The term processor appears only once in the entire Specification.11 That passage in the Specification states: The inertial sensor 23 could be an accelerometer with embedded power processing capabilities and which is always powered on in the first low power mode. The embedded power processing capabilities comprise a processor or other processing means for executing programmable software code for analysing the accelerations values delivered by the accelerometer, and for generating signals or values when certain conditions are met. Ex. 1001, 6:15–22 (emphasis added). We read the phrase “for executing programmable software code” as referring back to both the “processor” and the “other processing means.” The disjunctive “or” between “processor” and “other processing means” binds the two together as the subject being addressed. Accordingly, we know from the Specification’s only disclosure of the term, that a “processor” in an inertial sensor has a structure that is configured to execute programmable software code.12” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyOther
“Neither party suggests that “processor” invokes 35 U.S.C. § 112, paragraph 6. Nor do we so find. Thus, the Halliburton Rule against functional claiming still applies to “processor” and we do not construe that term to cover any structure which performs the recited function of “discriminating between gesture and no gesture based on a direction of said acceleration signal as measured by said accelerometer being a three dimensional accelerometer and on a slope or frequency of said acceleration signal.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“First, Petitioner has not asserted, much less demonstrated, that only a processor, and nothing else, can be used to detect a specific gesture, detect each component of the gesture, and analyze each component to determine whether a gesture has been properly formed. Although a processor may perform those functions, the record is inadequate to show, even for institution purposes, that only a processor, nothing but a processor, can perform those functions and that one of ordinary skill in the art would have so recognized. Thus, the fact that trigger circuit 38 detects a specific gesture, detects each component of the gesture, and analyzes each component to determine whether the gesture has been properly formed, does not make trigger circuit 38 a processor. Further, nothing indicates trigger circuit 38 is configured to execute programmable code. Second, that there are processors elsewhere in the system but in sleep mode at the time the inertial sensor operates does not persuade us that trigger circuit 38 itself must be a processor. This argument assumes, without supporting evidence and explanation, the stated functions of the trigger circuit can only be performed by a processor. Again, nothing indicates that trigger circuit 38 is configured to execute programmable code. Third, Petitioner has not explained the presence of switch 41 and comparator 46 within trigger circuit 38, neither one of which, on this record, is shown as having anything to do with execution of programmable code. Fourth, Orr describes that Main Accelerometer Sub-sys 42 in trigger circuit 38 includes a second motion sensor which is activated by a signal from switch 41 and which provides output signal 44 to threshold comparator 46. Ex. 1005, 7:3–17. Petitioner has not adequately explained the presence of this second motion sensor within Main Accelerometer Sub-sys 42. On this record, a motion sensor, such as the second motion sensor in Main Accelerometer Sub-sys 42, has not been shown to have anything to do with execution of programmable code. For all of the foregoing reasons, Petitioner has not adequately accounted for limitations 14[E][1] and 14[E][3]. In short, trigger circuit 38 is not configured to execute programmable code and so has not been shown to teach or suggest the processor limitation. Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Orr and Orr682.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 contentions and the evidence of record before us, and consistent with the Director’s remand instructions, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’678 patent. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’678 patent. B.” slip op. at 3
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,804,678 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - PTAB · Oct 3, 2024 · IPR2024-00736 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1, 4–7, 9, and 11 on all four asserted §103 grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, the Preliminary Reply, and the Corrected Preliminary Sur-Reply, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims of the ’725 patent. We thus institute an inter partes review of all the challenged claims of the ’725 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a). A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“The ’725 patent identifies the field of the invention as follows: The present invention relates to the marketing and distribution of multimedia material, including digitally generated film, video, graphics and audio, and analogue[] traditional media converted into digital movie and television programs, and associated marketing materials for distribution over a computer network to exhibitors and broadcasters. Ex. 1001 at 1:20–25 (’725 patent). Thus, according to the ’725 patent, the relevant field of art is marketing and distribution of multimedia material over a computer network. Several references, e.g., Allen and Budow, have highly technical disclosures. Further, a patent is presumed to be enabling. By that standard, it would mean one of ordinary skill in the art would have sufficient skills to make and use the claimed invention without undue experimentation. We disagree with Patent Owner that one of ordinary skill in the art need not have a technical degree. Accordingly, for purposes of this Decision, we adopt the following definition of the level of skill for one of ordinary skill in the art: a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent. We view this definition as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below. C. Claim Construction” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Prelim. Resp. 22–23. We are not persuaded that any of these excerpts from the Specification dictate that the term “distributing” must be construed narrowly, as Patent Owner proposes. Patent Owner has not supplied an affidavit or declaration in support of its proposed claim constructions, and the only extrinsic evidence cited in support is a “Glossary of Film Terms” that was not provided with the Preliminary Response. See id. 17. While excerpts from the glossary were filed with the original Preliminary Sur-Reply as Exhibit 2004, the document is provided without any context and is incomplete. For example, the glossary’s definition of “distribution” (a term not found in the challenged claims) refers to the entry for “exhibition,” but the page containing that entry is not included in the exhibit. See Ex. 2004, 6. Moreover, the glossary appears to be derived from a 2013 publication. See id. at 21. The ’725 invention is substantially older; the patent relates back to a provisional application filed in May 2000. Ex. 1001, code (60). Accordingly, we do not find Exhibit 2004, standing alone, to be persuasive evidence of the understanding that one of ordinary skill at the time the invention was made would have had of the term “distributing.” Petitioner argues that “distribution” (or “distributing,” as the term appears in the claims) “should be construed according to its plain and ordinary meaning in a manner at least broad enough to encompass the disclosed embodiments.” Prelim. Reply 1–2. In particular, Petitioner argues that “marketing” and “distributing” are “separate concepts that relate to different claim elements.” Id. at 1. Given the lack of evidence to suggest that the patentee intended to adopt any special definition of the term “distributing,” for the purposes of our Decision on Institution, we determine that the term “distributing” is not limited to the process of marketing a film and supplying copies to exhibition venues. It also encompasses the technical steps required to supply copies to exhibition venues, such as “providing a server system accessible over a communication network . . . for transfer of . . . digital format over said communication network[.]”2 See Prelim. Reply 1 (quoting Ex. 1001 at 16:29–34 (’725 patent)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“that the Preliminary Response proposes an implicit construction that improperly excludes determining “correlation” using human input. Prelim. Reply 3–4 (citing Prelim. Resp. 25–26). According to Petitioner, “‘correlated information’ should be construed at least broad[ly] enough to encompass the disclosures of the intrinsic record, including that it may be done with or without human input.” Id. at 5. Patent Owner denies that it has proposed a construction for the term and states that it has merely argued that the asserted prior art does not disclose correlation. Corr. Prelim. Sur-Reply 2–3. We determine, based on the evidence provided (discussed infra Section II.D.2.b), that we do not need to resolve this potential claim construction dispute between the parties. See, e.g., Nidec Motor Corp. v. 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 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,574,725 - Apple Inc. v. Smart Mobile Technologies LLCNo claims unpatentablePTAB · Sep 25, 2024 · IPR2022-01223 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–3 and 5 were not shown unpatentable over Yegoshin, Bernard, Johnston, and Preiss under § 103 because the evidence did not establish multiplexing signals.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“communication device for multiplexing signals.” Ex. 1001, 12:2–3 (emphasis added). The language in the preamble does not support adopting Petitioner’s proposed interpretation of “multiplexing” to mean that “the connections may be used simultaneously or sequentially for combining multiple data paths into a single path,” because signals are being multiplexed, not connections or data paths. Pet. Reply 10. No connection is recited in the preamble with regard to multiplexing.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Resp. 9–10 (citing Ex. 1002 (file history of the ’075 patent), 12; Ex. 2003 (Defendants’ Opening Claim Construction Brief from related litigation), 40–41; Ex. 2023 (Claim Construction Order from related litigation), 7). “Petitioner does not dispute that the preamble of claim 1 is limiting.” Pet. Reply 9 (citing PO Resp. 9–10; Ex. 2003, 45–46). Based on the full record, we adopt the parties’ agreement that the preamble is limiting. See also Ex. 2003, 45–46; Ex. 2023, 7.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“show by a preponderance of the evidence that Yegoshin teaches or would have been understood to reasonably suggest “multiplexing signals” and that Bernard “includes or operates as a multiplexer for combining the data packets.” See Pet. 32–40. Because Petitioner does not show multiplexing signals in any of the asserted references, Petitioner does not show by a preponderance of the evidence that its proposed combination of Yegoshin, Bernard, Johnston, and Preiss would have rendered obvious “[a]n IP-enabled communication device for multiplexing signals,” as recited by claim 1. Also, because Petitioner fails to show Yegoshin teaches or would have been understood to reasonably suggest multiplexed signals and fails to show that Bernard “includes or operates as a multiplexer for combining the data packets,” Petitioner’s asserted motivation to modify Yegoshin in view of Bernard for “multiplexing signals” lacks rational underpinning. Weighing the underlying factual determinations, a preponderance of the evidence does not persuade us that claim 1 of the ’075 patent is unpatentable over Yegoshin, Bernard, Johnston, and Preiss. Arctic Cat, 876 F.3d at 1361.” slip op. at 44
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We do not credit Petitioner’s cited testimonial evidence because, for the reasons above, Yegoshin and the full record do not support it. Ex. 1003 ¶¶ 79, 80. We, instead, credit Patent Owner’s cited testimonial evidence because Yegoshin and the full record better support it. Ex. 2018 ¶¶ 50, 51, 55–56, 58–61; see also Ex. 2025, 65:19–66:4.” slip op. at 26
Patent outcomesUS 9,319,075 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,319,075 - PTAB · Sep 12, 2024 · IPR2024-00833 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–19 over all petitioned grounds, finding a reasonable likelihood that claim 1 would have been obvious, and granted ZEPP’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Although ZEPP is correct that a General Plastic analysis is generally only applicable when the same party files multiple petitions challenging the same patent, the Board has extended General Plastic factor 1 to include a third-party subsequent petitioner who has a “significant relationship” with the prior petitioner, as discussed below. 2. No Significant Relationship between ZEPP and Samsung In Valve Corporation, the Board extended the General Plastic analysis to situations in which a subsequent petition is filed by a different petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, paper 11 (PTAB Apr. 2, 2019) (precedential) (hereinafter “Valve”). Specifically, the two petitioners in Valve were co-defendants in a District Court litigation, had a licensing relationship concerning a product, and were accused of infringing based on the same product. Valve, slip op. at 9–10. The Board considered whether there was a sufficiently “significant relationship” between the two different parties filing the two petitions that the second petitioner should be regarded as the same petitioner under General Plastic factor 1. Valve, slip op. at 2, 10 (emphasis added). Here, Patent Owner asks the Board to exercise its discretion under § 314(a) to deny institution under General Plastic (Opp. 3–6). But Patent Owner has not established under General Plastic factor 1 that ZEPP itself (or its privy) has filed multiple “follow-on” petitions challenging the same patent as challenged previously in an inter partes review. Nor has Patent Owner established, also under General Plastic factor 1, that ZEPP (as the subsequent petitioner) and Samsung, have a significant relationship, in the sense contemplated by Valve (i.e., as co-defendants accused of infringing based upon the same product). Valve at 9–10.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that (1) ZEPP has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim in the ’033 patent; and (2) ZEPP has satisfied the threshold requirement to warrant joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On this record, we find ZEPP has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition filed in the Samsung IPR; (2) contains the same grounds for the same claims based upon the same evidence; and, (3) relies upon the same Declaration of Dr. Benjamin B. Bederson, Ph.D. See Mot. for Joinder 1 (“same expert declarations”); Ex. 1002. ZEPP represents that it will assume “a silent participant role.” Mot. for Joinder 1. ZEPP also represents that it “merely seeks to join an ongoing proceeding as an understudy.” Reply 6 (citing Mot. for Joinder 6). For what constitutes an “understudy role,” see footnote 8, supra. And ZEPP clarifies that it “will not take an active role in the inter partes review proceeding unless the Samsung Petitioner ceases to participate in the instituted IPR.” Mot. for Joinder 1. ZEPP also “does not request any schedule changes” such that “the Board will be able to timely issue a final written decision.” Reply 6–7. On this record, we find ZEPP has satisfied the requirements for joinder, as described above, and has demonstrated that joinder will not unduly complicate or delay the Samsung IPR. See 37 C.F.R. § 41.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant ZEPP’s Motion for Joinder and, as a result, join ZEPP as a party to the Samsung IPR.” slip op. at 11
Discretionary denialPatents in suitUS 8,588,033
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.