- PTAB · Aug 8, 2023 · IPR2023-00447 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–26 on all petitioned grounds, finding a reasonable likelihood that Cisco would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’602 patent. Accordingly, we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“[T]he PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Petitioner filed such a stipulation. Ex. 1020. slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering or an equivalent, as well as two years of professional experience” and “a working knowledge of hardware and software for packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,118,602 - PTAB · Aug 4, 2023 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood that Arista would prevail on claim 1 as obvious over Baker, Wright, and Holender ’699.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Id. at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Houh’s testimony, Arista argues that a person of ordinary skill in the art “would have had a working knowledge of networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). At this stage, Corrigent does not dispute Arista’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Because Arista’s articulation of that level of skill is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Arista argues that “no claim term requires express construction” for this proceeding. See Pet. 11 (citing Ex. 1003 ¶ 28). Likewise, Corrigent does not propose any explicit constructions at this stage, and states that it “will apply the ordinary and customary meaning to the ’431 Patent claim terms.” See Prelim. Resp. 4. At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Apotex Inc. v. Cellgene CorporationInstitutedPTAB · Jul 20, 2023 · IPR2023-00512 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 6–9, 11–28, 32–36, and 38–43 on all asserted grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that at least one of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent is unpatentable over the cited prior art. Our decision derives from our review of the preliminary record before us. Accordingly, we institute inter partes review of each challenged claim the ’628 patent on each of the grounds asserted by Petitioner. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that the Petition is granted and we institute inter partes review of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent based on the grounds asserted in the Petition.” slip op. at 53
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “[w]hen the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term.” Multiform Dessicants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). We agree with the parties that the ’628 patent expressly defines this term in stating “[t]he term ‘non-enteric-coated,’ when used herein, refers to a pharmaceutical composition, formulation, or dosage form that does not comprise a coating intended to release the active ingredient(s) beyond the stomach (e.g., in the intestine),” and we adopt this express definition herein with regard to “nonenteric coated tablet.”9 Ex. 1001, 11:42–48 (emphasis added).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“to, and sometimes associated with, but not identical to the claim term “subject”), which appears in claims 11, 12, 18–22, and 38–43, means “a human or other animal who received the recited pharmaceutical composition in connection with a test of the recited parameter.” Prelim. Resp. 18–19 (also asserting Petitioner does not appear to dispute this construction). We first note that the term “test subject” appears in the ’628 patent only in the claims. See generally Ex. 1001. However, we find Patent Owner’s definition comports with the Specification’s express definition of “subject,” a term the Specification appears to use synonymously with the claim term “test subject” and the word patient, and that Patent Owner’s definition adds that the subject received the pharmaceutical composition in connection with a test of the recited parameter, which we find to be a reasonable interpretation of the claim term “test subject,” in accordance with the plain language of the claims on their face, and as supported by the relevant portions of the Written Description that describe testing parameters relating to drug administration. Ex. 1001, 35:45–36:62, 67:61–81:48. We adopt Patent Owner’s definition herein.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). However, “‘[i]nherency . . . may not be established by probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (citations omitted, alterations in original). “The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.” Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,846,628 - PTAB · Jul 6, 2023 · IPR2023-00168 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that claim 6 is unpatentable over Klassen.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“communications, including ring networks and latency calculation methodologies” and “a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of work experience in network communications.” Pet. 9 (citing Ex. 1003 ¶ 19). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 9 (citing Ex. 1003 ¶ 19). Patent Owner does not address the level of ordinary skill in its Preliminary Response. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, which is consistent with the level reflected by the ’485 patent and the asserted prior art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 10; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial. (3) The third factor weighs in favor of discretionary denial because the district court has issued a Claim Construction Order (Ex. 2001) and fact discovery has begun (Prelim. Resp. 9). (4) The fourth factor weighs against discretionary denial because Petitioner states that, “[i]f the Board institutes trial, Petitioners will cease asserting in the co-pending litigations the combination of references on which trial is instituted for the claims on which trial is instituted, to the extent Petitioners even assert the same combination in the litigations against them” (Pet. 73). See Prelim. Resp. 9–10 (acknowledging Petitioner’s stipulation and arguing that the fourth factor “only marginally favors not exercising discretion to deny institution”). (5) The fifth factor is neutral because the defendants in the co-pending litigation are collectively the Petitioner in this proceeding. (6) Because we determine factors one through five do not, on balance, warrant discretionary denial, we consider the sixth factor neutral without determining whether Petitioner’s showings rise to the level of compelling merits. Accordingly, weighing the Fintiv factors based on the current record, we decline to exercise our discretion to deny institution under § 314.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Patent Owner’s arguments do not sufficiently rebut any of Petitioner’s showings nor cite any specific deficiency in Petitioner’s evidence and arguments. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney[] argument is no substitute for evidence.”). It is unclear on the current record what “latency measurement packet and specific techniques” in the ’485 patent (Prelim. Resp. 2) might be reflected in claim 6 (or other claims), and the parties are encouraged to clarify any issues relating to claim scope during the trial portion of this proceeding. On the current record, we determine Petitioner has adequately shown that Klassen teaches or reasonably suggests each limitation of claim 6, such that Petitioner has shown that it is reasonably likely to prevail in showing that claim 6 is unpatentable in view of Klassen.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,113,485 - PTAB · Jul 6, 2023 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over Baker and Wright.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. After Corrigent submitted its Preliminary Response, Petitioner requested authorization to submit a Sotera stipulation, which we authorized on May 12, 2023. See Paper 8, 2. Petitioner stipulated as follows: “[I]f the PTAB institutes IPR on the grounds presented in the petition, Petitioner[] will not pursue in the copending district court litigations . . . the specific grounds asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR . . . .” Id., App’x A, 1–2. This is the type of broad stipulation contemplated in the Interim Procedure, and in light of this stipulation, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all the above reasons, we determine that Petitioner is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Baker in view of Wright.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Corrigent does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Because Petitioner’s articulation of that level of skill is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms and states that “no claim term requires express construction” for this proceeding. See Pet. 11 (citing Ex. 1003 ¶ 28). Likewise, Corrigent does not propose any explicit constructions at this stage, and states that it “will apply the ordinary and customary meaning to the ’431 Patent claim terms.” See Prelim. Resp. 4. At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00033 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 46–51, 53, 54, 58, 59, 64, and 67 on all asserted grounds after finding a reasonable likelihood that claim 46 is obvious over Thelen, Bailey, and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuasive at this stage that claim 46 is unpatentable under § 103(a) as obvious over the combination of Thelen, Bailey, and Chen.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 5 (citing Ex. 1003 ¶¶ 24–26). At this stage, Zentian does not dispute Apple’s proposed level of ordinary skill in the art. Prelim. Resp. 4. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’319 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Apple states that it “applies the plain and ordinary meaning of all claim terms,” and does not propose any explicit constructions. See Pet. 7. Likewise, Zentian does not propose any explicit constructions at this stage. See Prelim. Resp. 4. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,587,319 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00037 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Jiang and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “[i]f the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have been reasonably raised in the pending Petition.” Paper 9. In light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Interim Procedure 3.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 24–26). At this stage of the proceeding, “Patent Owner does not dispute the Petition’s proposed level of skill for a person of skill in the art.” Prelim. Resp. 4. Based on the record presented, including our review of the ’140 patent and the types of problems and solutions described in the ’140 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mr. Schmandt testifies that the strictness to which a pruning threshold is set in a speech recognition system depends upon the computing resources available, where a higher pruning threshold uses less computational resources but has a higher chance of errors, and a more relaxed pruning threshold has a lower chance of errors but uses more computational resources and is thus more expensive. Ex. 1003 ¶ 74. Mr. Schmandt testifies that Chen contemplates reducing the cost of a parallel processing computing platform as a goal of its invention. Id. Mr. Schmandt testifies that modifying Jiang’s speech recognition circuit to use clusters of processors as taught by Chen yields the predictable result of providing a more powerful computing platform that enables a more relaxed pruning” slip op. at 15
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,971,140 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00034 · APJ Christopher L Ogden · IPR · Institution
Instituted review of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 on all asserted grounds based on a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. After Zentian submitted its Preliminary Response, Apple requested authorization to submit a Sotera-type stipulation, which we authorized on April 14, 2023. See Paper 9, 1. Apple stipulated as follows: “If the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have reasonably been raised in the pending Petition.” Id. This is the type of broad stipulation contemplated in the Interim Procedure, and in light of this stipulation, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may institute an inter partes review 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we institute an inter partes review of all the challenged claims of the ’277 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). At this stage, Zentian does not dispute Apple’s proposed level of ordinary skill in the art. Prelim. Resp. 6–7. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian states that it “does not dispute that construction at this time and it is not necessary to resolving the parties’ disputes.” Prelim. Resp. 7. At this preliminary stage, we agree with Zentian that resolving whether the claim 14 limitation invokes § 112 paragraph 6 does not appear to be necessary for resolving the grounds of the Petition. Otherwise, to the extent that we need to interpret claim language, we address that language below in the context of the prior art. See 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,277 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6–14, 16–18, 20–29, 35, 37–39, and 42–45 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Smyth and Mozer.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). At this stage of the proceeding, “Patent Owner does not dispute the Petition’s proposed level of skill for a person of skill in the art.” Prelim. Resp. 4. Based on the record presented, including our review of the ’789 patent and the types of problems and solutions described in the ’789 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001,1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various methods of speech recognition systems).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. Patent Owner contends its “arguments in this Preliminary Response are based on the plain and ordinary meaning of the words of the claims themselves in view of the associated teachings of the specification.” Prelim. Resp. 5. We conclude that no terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In this proceeding, Petitioner stipulates that “[i]f the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have been reasonably raised in the pending Petition.” Paper 9. In light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Interim Procedure 3.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mozer teaches that “the vector processor does not generate a CPU HOLD signal on control line 428 to carry out the vector operation because both vector inputs are accessed from peripheral memory 460.” Id. at 10:27– 30. Mozer teaches that “[t]his embodiment is advantageous because external processor is allowed to access the bus to perform other functions during a vector operation.” Id. at 10:32–34. Mr. Schmandt testifies that using a known technique of fabricating certain components on a single integrated circuit as taught by Mozer would have improved Smyth’s speech recognition system in the same way. Ex. 1003 ¶ 167. On this record, we are sufficiently persuaded that the Petition and supporting evidence provides a reason to combine the teachings of Smyth and Mozer. Mr. Schmandt testifies that “it was known in the prior art to fabricate a single integrated circuit that comprised a calculating apparatus and acoustic model memory for use in a speech recognition system.” Ex. 1003 ¶ 168 (citing Ex. 1029); see id. at ¶¶ 73–74. On this record, we are sufficiently persuaded by Mr. Schmandt’s testimony and the teachings of the prior art that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory as shown by Toyoda (Ex. 1029) was within the level of ordinary skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based on the evidence and arguments currently of record, for purposes of institution, we determine that Petitioner demonstrates a reasonable likelihood that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Smyth and Mozer.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,839,789 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00035 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–6, finding a reasonable likelihood that the Jiang and Smyth combinations, with additional references for dependent claims, render them unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’377 Patent. Accordingly, we institute an inter partes review of claims 1–6 of the ’377 Patent on the ground of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) 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. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: If the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have reasonably been raised in the pending Petition. Paper 9, 1. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level petitioner adoptedOther
“person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. Prelim. Resp. 5. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party provides explicit claim constructions for claim features. Pet. 5–6; Prelim. Resp. 5. Therefore, we determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,062,377
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.