- PTAB · Dec 6, 2023 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VII. ANALYSIS A. Legal Standards “In an [inter partes review], 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”)); see also 37 C.F.R. § 42.104(b) (2019) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) 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 at the time the invention was made 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 obviousness or nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“To resolve this controversy, we turn to the decision in Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019). In Hulu, the Board issued a decision denying institution of an inter parties review because the Board found that a petitioner failed to sufficiently show that a reference qualified as a printed publication. Id. at 2. The Board’s Precedential Opinion Panel (POP) ordered a review on rehearing to address the issue of what is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage. Id. The POP determined that the statutory “reasonable likelihood” standard for institution applies to the issue of whether a reference is a printed publication. Id. at 13. The POP “explained that it is a higher standard than mere notice pleading, but, . . . it is lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. In Hulu, Patent Owner argued that “the reasonable likelihood standard is satisfied only when a petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review, with a few limited exceptions.” Id. at 11. The POP, however, determined that “[w]hile the petitioner must submit evidence sufficient to meet the reasonable likelihood standard, some limited opportunities exist for the petitioner to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.” Id. at 14. The POP explained that, for example, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Id. at 15. The POP also explained that, if a patent owner does not challenge the reference’s status as a printed publication, the petitioner may move to submit the declaration through the supplemental information process. Id.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends that Basturk teaches away from providing authentication as an application protocol on an application layer because Basturk discloses that the presence of application level security features does not necessarily imply the security of delivery, which shows the need for security at the transport layer. Prelim. Resp. 43–53. However, Basturk discloses that application level security features are provided by application level security. Ex. 1006, 3. For example, Basturk discloses guaranteeing integrity by signing the data before passing it to the transport level. Id. at 3– 4. Basturk further discloses “a method to transform any transport protocol into a ‘secure’ version, equipped not only with the new security features discussed above, but providing, at least as options, the standard application level security features.” Id. at 5. At this stage, we are sufficiently persuaded that Basturk teaches providing standard application level security features such as authentication. Patent Owner contends that on-the-fly processing as taught by Basturk is not enabled by the use of a trailer. Prelim. Resp. 52–55. Basturk discloses computing signatures as data transmission proceeds, to achieve the goals of avoiding slowing down the regular flow of data, and allowing the possible off-load of signature computations. Ex. 1006, 7, 12. Basturk discloses that the signature of an outgoing packet is computed after data encryption, which complies with the requirement that the signature is computed “on-the-fly.” Id. at 14. Dr. Houh testifies that computing the signature “on-the-fly,” as data is being transmitted, provides the benefits of faster data transmission, reduced jitter, and reductions in computing power. Ex. 1003 ¶ 64. Dr. Houh testifies that calculating the signature of Handley’s RTP packet “on-the-fly” and placing the signature at the end of the packet as taught by Basturk yields the benefit of transmitting data while computing the signature, which minimizes latency as taught by Basturk. Id. ¶ 85. At this stage, we are sufficiently persuaded that a person of ordinary skill would have placed the authentication information of Handley’s RTP packet at the end of the packet as taught by Basturk to yield the benefits of faster data transmission, reduced jitter, and reductions in computing power. Accordingly, for purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Handley and Basturk.” slip op. at 20
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Dr. Houh further testifies that, given the remaining choices of placing the authentication data at the beginning or the end of the payload data, a person of ordinary skill would have recognized that placing the authentication data at the end of the payload data would reduce latency because this allows the packet to be transmitted while the authentication data is calculated. Ex. 1003 ¶ 178. To support this testimony, Dr. Houh relies on other protocols that use integrity checks, such as the Frame Check Sequence located at the end of an Ethernet Frame. Id. (citing Ex. 1014). We are sufficiently persuaded at this stage, based on Dr. Houh’s testimony and supporting evidence, that a person of ordinary skill would have placed the authentication data at the end of the whole RTP packet payload as claimed. Further, on this record, given the choice between placing authentication data at the beginning, middle, or end of the packet, we are sufficiently persuaded that it would have been obvious to place the authentication data at the end. See KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (Reversing the Board’s determination of lack of motivation, stating that “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - PTAB · Nov 17, 2023 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 13–17 on all petitioned grounds after finding a reasonable likelihood of prevailing on at least one obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 13–17 of the ’702 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On this preliminary record, we agree with Petitioner that the intrinsic record does not support a construction of “stackable add-on layer” that encompasses formation of memory cells by sequential deposition on a plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells that is bonded to the dielectric layer. Ex. 1001, 12:29–32. The written description of the ’702 patent strongly suggests that such “a stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate. Id. at 1:47–50 (“Briefly, a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” (emphasis added)). It is unclear how memory cells sequentially deposited on a substrate could be considered to be a plurality of memory devices “added to a separately fabricated substrate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends one of ordinary skill in the art would have combined Watanabe and Lee because Watanabe discloses an alternate method of forming a memory device that is applicable to the memory devices of Lee and Watanabe, and Watanabe discloses that its “stacking method” improves the accuracy of the wiring and provides “a semiconductor memory device with improved integration density” and “low interconnection wire resistance.” Id. at 72.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“3. Factor 3 – Investment in the parallel proceeding by the court and the parties Under the third Fintiv factor, we consider the “investment in the parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6. Petitioner contends that, at the time of the filing of the Petition, the court had not yet held a case management conference or set a Markman or trial date, and that no hearings or substantive activities or hearings have occurred in the case. Pet. 75. “Because the investment in the trial has been minimal and Petitioner acted diligently” in filing the Petition, Petitioner contends “this factor weighs strongly against discretionary denial.” Id. Patent Owner contends the co-pending district court case has been moving forward, with infringement and invalidity contentions being exchanged and discovery and deposition underway. Prelim. Resp. 34. Patent Owner further contends that by the institution deadline of November 28, 2023, the parties will be in the “home stretch of discovery.” Id. at 34– 35. “Based on the considerable resources already expended on contentions and discovery in the district court,” Patent Owner argues that Fintiv factor 3 weighs in favor of denying institution. Id. at 35. directed to no substantive rulings by the district court to suggest that it has invested considerable resources in the case. Nor are we presented with evidence that the parties have expended significant resources in the district court litigation. Fact discovery is not scheduled to be completed until July 1, 2024, and expert discovery is to be completed by August 5, 2024, i.e., more than seven months after the institution deadline. Ex. 2001, 3. Accordingly, we determine that Fintiv factor 3 weighs against discretionary denial of institution. 4. Factor 4 – Overlap between issues raised in the petition and in the parallel proceeding Under the fourth Fintiv factor, we consider the “overlap between issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 6. Petitioner contends that in the district court litigation Patent Owner asserts infringement under only claim 13, whereas the Petition challenges claims 13–17. Pet. 76. Petitioner argues that because it is challenging more claims than are asserted in the district court litigation, this proceeding “is the only venue in which the invalidity challenges against several claims in the ’702 Patent will be adjudicated,” and this proceeding will promote efficiency because it “will resolve disputes against future district court defendants.” Id. Patent Owner responds that Petitioner’s “invalidity contentions challenge the same Claims 13–16 based on the identical Watanabe, Lee, and Endoh references relied upon in the Petition.” Prelim. Resp. 35. Petitioner responds that it has signed and served a stipulation “not to pursue in the parallel district court proceeding any obviousness ground that includes the primary references in the Petition.” Prelim. Reply 2. According to Petitioner, “[t]his stipulation mitigates concerns of potentially the PTAB.” Id. Patent Owner argues in response that Petitioner’s “meager agreement” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00485 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–10 on all petition grounds; Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, Rossi, and Castellani.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“second German priority application do not disclose every limitation of independent claims 1 and 7 of the ’430 patent. Figure 1 does not depict a barcode under the flange, but rather the use of raised areas on the side of the capsule that act as an identifier. Ex. 1047, Fig. 1. Figure 2, coupled with its associated description, might suggest that the barcode could be on the portion of the base element facing away from the membrane,9 but this figure does not disclose many of the other elements of the claim, including holding arms, a drop box, annular convexity and concavity, and a pump to supply water to the single-serve capsule. Pet. 41; Ex. 1047, 9:21–24, Fig. 2. We also determine that Patent Owner does not sufficiently demonstrate that Figures 16–18 of the second German priority application provide adequate disclosures showing that the inventors were in possession 9 We question whether the second German priority application supports placing a barcode under the flange. The application states that the barcode could “be provided on that side of the peripheral region of the basic element which is directed away from the membrane.” Ex. 1047, 9:21–24. This statement is rather ambiguous as to where the “peripheral region” is that is “directed away from the membrane.” The text goes on to explain, however, that “[t]his barcode,” i.e., the barcode that is “directed away from the membrane,” “is read by a detector 13,” which in Figure 2 is oriented to read a barcode on the top surface of the flange. Id. at 9:25–26, Fig. 2. This suggests that the barcode is not on the bottom side of the flange and that arrow 15 is pointing to the outer portion of the peripheral region that is not covered by the membrane, and not necessarily the bottom of the flange. First, the second German priority application describes the use of “an identifier” that is read by a “sensor/detection means” and then compared to a stored identifier. Ex. 1047, 2:29–31. In Figure 2 the identifier may be a barcode and the detection means is detector 13. Id. at 9:11–26. In Figures 16–18, however, element 2.4.2 is not an identifier, but rather a “a form-fitting and/or friction-fitting means and/or a detection means.” Id. at 12:22– 24 (emphasis added). As such, it is unclear how this disclosure would demonstrate possession of the disputed claim limitation, when combined with the other limitations of claims 1 and 7 as a whole. Second, it is not evident that the toothed rings of Figures 16–18 are on the underside of the flange, as asserted by Patent Owner. Prelim. Resp. 42 (asserting that a barcode “could be located on the bottom side of the flange instead of the toothed ring”); Prelim. Sur-reply 4. The second German priority application states that the “form-fitting and/or friction-fitting means and/or detection means 2.4.2” is located in the “outer region” of the peripheral region 2.4. Ex. 1047, 12:22–24. We are directed to no evidence that this “outer region” is on the bottom of the flange, and Figures 16–18 each appear to depict means 2.4.2 on, or forming, the outer circumference of the flange.11 Id. at Figs. 16–18, 6:8–11 (noting that the toothed ring is provided “on the outer circumference of the periphery”). 10 The parties dispute whether Figure 16 of the second German priority application discloses annular convexity and concavity. Pet. 42–43; Prelim. Resp. 45–46; Prelim. Reply 4–5; Prelim. Sur-reply 4. At most, the parties identify a material issue of fact with respect to these two claim elements that is best resolved on a full trial record. 11 At first blush, Figure 17A appears to show means 2.4.2 under a portion of element 27 of the capsule. Ex. 1047, Fig. 17A; Prelim. Sur-reply 4 depicted in Figures 16–18, which rely on toothed rings physically interacting with either the chamber, retaining arms, or a pinion. Ex. 1047, 12:22–31, 13:8–18. The second German priority application explains that means 2.4.2 physically interacts with retaining arms 30 (embodiments of Figures 16 and 17) or a pinon (embodiment of Figure 18), and if means 2.4.2 were not present in these embodiments, the capsule would either “drop through into a waste container” or could not be inserted through the insertion shaft. Id. at 12:22–27, 13:9–12, 13:16–35 (noting that in the embodiment disclosed in Figure 18 a pinon interacts with means 2.4.2 and only when means 2.4.2 “is formed complementary to the teeth of the means” can the capsule be inserted). Patent Owner does not sufficiently explain how a barcode could replace means 2.4.2 in these embodiments and still retain the capsule within the device or allow the capsule to enter the insertion shaft.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“First, Yoakim expressly states that the capsule may use a “barcode,” and the plain and ordinary meaning of this term is a code that satisfies the construction adopted by the district court. To the extent Patent Owner has reason to believe that Yoakim does not apply the plain and ordinary meaning of the term “barcode,” and that one of ordinary skill in the art would have understood this fact, it is encouraged to present such evidence during trial. Second, in this obviousness inquiry the question is not whether a person of ordinary skill in the art is more likely to adopt a barcode or a bitcode, but whether one of ordinary skill in the art would have seen a benefit to applying the “barcode” of Yoakim under the flange of the capsule. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our case law is clear. It’s not necessary to show that a combination is ‘the best option, only that it is a suitable option.’”). On that point, Jarisch expressly discloses the benefits of doing so. Ex. 1005 ¶ 22 (noting that applying the code at the bottom of the rim lowers the risk of the code becoming unreadable). As such, we determine that Petitioner sufficiently identifies where Yoakim discloses a barcode and explains why one of ordinary skill in the art would have placed such a “barcode” on the bottom of the capsule’s flange.” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Information Disclosure Statement (IDS) during prosecution of the ’430 patent and that Rossi and Castellani were mentioned in the inter partes reviews that were cited on the IDS. Pet. 19; Prelim. Resp. 23. We need not determine whether Part 1 of the Advanced Bionics framework is satisfied based on these disclosures, however, as Part 2 of the analysis, which we address below, is dispositive. a) Factor (c)—the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for a rejection The Examiner did not issue any rejections during prosecution of the ’430 patent. Ex. 1002, 232–234. As the reasons for allowance, the Examiner stated: [A]llowance of claims 1 and 21–29 is indicated as none of the cited prior art discloses or suggests the flange comprising a top side and an opposing bottom side; a cover that is fastened to the top side of the flange to close the cavity; and an identifier provided on the bottom side of the flange, the identifier being a barcode, wherein the beverage machine, by reading or detecting the identifier with the sensor/detector, is configured to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine, and only if the beverage machine determines that the single-serve capsule belongs to the group of single serve capsules operable for use with the beverage machine is the pump controlled to push the water into the single-serve capsule. Id. at 233. In arriving at this conclusion, the Examiner did not cite or discuss the disclosures of Yoakim, Jarisch, Rossi, or Castellani. Id. at 232–234. Yet, these references appear, based on the current record, to expressly teach or allowance, including a “flange comprising a top side and an opposing bottom side” (Ex. 1004 ¶ 197, Fig. 6); “a cover that is fastened to the top side of the flange to close the cavity” (Ex. 1004 ¶¶ 128–129, 197, 414); “an identifier provided on the bottom side of the flange” (Ex. 1005 ¶ 22) that is “a barcode” (Ex. 1004 ¶¶ 496, 525); and “reading or detecting the identifier with the sensor/detector . . . to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine” (Ex. 1004 ¶¶ 25, 192, 477, 494–496, 525; Ex. 1005 ¶ 82; Ex. 1041, 3, 11). As such, to the extent the asserted combination of prior art references was evaluated during prosecution of the application that matured into the ’430 patent, we determine that such evaluation was minimal.” slip op. at 37
- Other 314aDecided for petitioner
“B. 35 U.S.C. § 314(a) Patent Owner contends that “[t]he parties have been embroiled in disputes involving substantive claims for infringement for both the ’430 Patent and the Jarisch 929 reference,” and “it is unnecessary to open up yet another front in this dispute.” Prelim. Resp. 68–69. As such, Patent Owner requests that we deny institution under 35 U.S.C. § 314(a). Id. Patent Owner directs our attention to no case in which the Director has exercised discretion to deny a petition merely because the same patent was the subject of a co-pending district court infringement action. Indeed, 35 U.S.C. § 315(b) specifically contemplates such a scenario. Accordingly, we decline to exercise discretion to deny the Petition under 35 U.S.C. § 314(a).” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 11,230,430 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR on claims 1–16 because Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 1–16 of the ’923 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). One may show support for the claims of a later application by showing that a single, earlier application provides written description support for the claims. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Studiengesellschaft Kohle, MBH v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (noting that a patentee “cannot distinct previous applications”). Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“7. Analysis: Reasons to Combine the References Petitioner shows sufficiently that Yoakim, Jarisch and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/espresso machines.” Pet. 43. “Yoakim and Jarisch both improve the optimization of beverage parameters in a single-serve brewing system, and use optical codes read by the machine to achieve this.” Id. “Rapparini further improves the the wall of the capsule body like those used in Yoakim and Jarisch.” Id. at 43–44; see id. at 50–51, 53–54 (Petitioner’s further argument that Rapparini discloses “an optimized capsule structure that is stiffer and more stable” by virtue of radially spaced and vertically oriented ribs and grooves, where the vertically oriented grooves are free from extending entirely to the bottom region of the capsule). Petitioner directs us to additional evidence tending to establish that an ordinarily skilled artisan would have been prompted to modify Yoakim’s device, to include the code placement of Jarisch and the grooves and ribs of Rapparini, to arrive at the claimed invention with an expectation of success. Id. at 44–48.” slip op. at 27
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,994,923 - PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00577 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’048 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 13–18.7 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“same arguments as those included in its preliminary response filed in the Apple IPR. Compare Prelim. Resp., with Apple IPR, Paper 6 at 1–2, 8–59. Although the Preliminary Response additionally incorporates Patent Owner’s arguments regarding discretionary denial under 35 U.S.C. § 325(d) from Patent Owner’s Preliminary Sur-reply in the Apple IPR (compare Prelim. Resp. 2–7, with Apple IPR, Paper 8 at 1–6), no new arguments are presented by Patent Owner’s Preliminary Response in this proceeding with respect to discretionary denial under § 325(d) or the patentability of the challenged claims.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that: Petitioner will: 1. Adhere to all applicable deadlines in the Apple IPR; 2. Submit “consolidated” filings with the Apple, as set forth above in the statement of precise relief requested; 3. Refrain from requesting or reserving any additional depositions or deposition time; 4. Refrain from requesting or reserving additional oral hearing time; and 5. Assume a second-chair role as long as Apple remains in the proceeding. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 8,881,048 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00579 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,304,654 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00578 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,696,868 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 17, 2023 · IPR2023-00344 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
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). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’868 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under the specific facts of this case, we agree with Petitioner’s emphasis on the combined teachings of Anthony and Hanggie in Petitioner’s challenges to the claims of the ’868 patent. To paraphrase an expression, this is one case where the combination of the teachings of the prior art is greater than the sum of its parts. As discussed below in Section III.F.3, Petitioner’s proposed combination of Anthony and Hanggie is fundamental to Petitioner’s theory of obviousness, relying on the combined teachings of Anthony and Hanggie in nearly all elements of the challenged claims. Thus, 5 U.S. Patent Application Publication No. 2002/0033848 A1 (Ex. 2009, “Sciammarella”). 6 U.S. Patent No. 6,725,427 B2 (Ex. 2007, “Freeman”). 7 U.S. Patent No. 6,768,999 B2 (Ex. 2008, “Prager”). 8 U.S. Patent Application Publication No. 2003/0179231 A1 (Ex. 2011, “Kamiwada”). 9 U.S. Patent Application Publication No. 2001/0050687 A1 (Ex. 2010, “Iida”). we find that our § 325(d) inquiry in this case must consider the combination of Anthony and Hanggie to meaningfully evaluate the Becton, Dickinson factors under the Advanced Bionics framework. During the prosecution of the ’868 patent (or the ’708 application that led to the ’868 patent), the Examiner did not reject any claims but instead allowed the claims as filed in the applicant’s preliminary amendment. See Ex. 1002, 27–29, 50–66, 68–80. In view of this record, although the ’868 patent lists on its face a number of prior art references cited by the Examiner, we agree with Petitioner that no combination of prior art substantially similar to the asserted combination of Anthony and Hanggie was considered during the prosecution of the ’868 patent.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘868 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’868 patent, the types of problems and solutions described in the ’868 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,696,868 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 6, 2023 · IPR2023-00343 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1–5, 7, 8, 10–13, 15–17, and 19 are obvious over Anthony and Hanggie, and claims 6, 9, 14, and 18 over Anthony, …
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; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’654 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis of discretionary denial under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“were presented to the Office.” The Board uses a two-part framework for evaluating arguments 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 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework, i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics at 10. Factors (c), (e), and (f) relate to the second part of that framework, i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Fuchs, Petitioner asserts that a person of ordinary skill in the art (“POSITA”) as of September 13, 2005 (the earliest possible priority date of the ’654 patent) would have had “at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with 2D and 3D graphical user interfaces.” Pet. 10 (citing Ex. 1003 ¶¶ 31–32). Petitioner further states that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 31– 32). Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘654 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,304,654
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.