- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Oct 3, 2023 · IPR2023-00601 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on both asserted obviousness grounds based on a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] 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’s Memo 3. With our authorization, Petitioner has filed a stipulation, which stipulates that “if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam 4 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 5 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00601], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1023, 1. We determine that the language of this stipulation sufficiently comports with the language of the stipulation discussed in the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related District Court litigation.” slip op. at 8
- Parallel petitionsDecided for petitioner
“Petitioner filed two concurrent petitions (IPR2023-00601 and IPR2023-00602) challenging the validity of claims 1–20 of the ’113 patent. Consistent with the Board’s practice for handling parallel petitions provided in the Consolidated Trial Practice Guide (“CTPG”),6 Petitioner filed a Notice Ranking Petitions (Paper 2, “Notice”). See CTPG 59–60. Patent Owner did not file a response to Petitioner’s Notice or address the Notice in its Preliminary Response. In the Notice, Petitioner states that although it “believes that both Petitions are meritorious and justified,” it ranks the Petition filed in this proceeding first and the -00602 petition second. Notice, 1. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a) (see CTPG 61), we decline to exercise that discretion here, in light of Petitioner ranking this Petition first.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“m. Summary as to Claim 1 Based on the preliminary record before us, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over Xia and also would have been obvious over the combination of Xia and Jover. 4. Independent Claims 6, 11, 16 Petitioner sets forth similar arguments for independent claims 6, 11, and 16 as for claim 1. See Pet. 42–46, 49–57, 60–64. Patent Owner relies on the same arguments for these claims as it does for claim 1. Prelim. Resp. 26–27. For similar reasons as discussed above, Petitioner has shown a reasonable likelihood that claims 6, 11, and 16 would have been obvious over Xia and would have been obvious over the combination of Xia and Jover.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A person of ordinary skill in the art (POSITA) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with telecommunications systems, including multiple-input multiple-output (MIMO) technology. Additional relevant work experience can compensate for less education, and vice versa. Pet. 14 (citing Ex. 1002 § IX). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 8. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision, except that we do not include in our definition Petitioner’s last sentence regarding additional relevant work experience compensating for less education and vice versa, as this sentence is vague.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,568,113 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00525 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1–11 on all asserted grounds, finding a reasonable likelihood that claims 1–3, 5–7, and 9–11 are anticipated by Eisl and claims 1–11 are obvious over Eisl.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner demonstrates that the Examiner overlooked specific teachings of Eisl with respect to the claim limitations that the applicant added to obtain allowance of the challenged claims. In particular, as discussed in detail below, Petitioner presents evidence that Eisl teaches counting “in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network.” See Section II.E.1. As a result, on this record, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a degree in electrical engineering or a similar discipline, with at least two years of relevant industry or research experience, including designing or implementing network systems,” as well as “familiarity with the wireless standards and protocols relating to subscriber management.” Pet. 17. Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. James Olivier. Ex. 1003 ¶¶ 34–43. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,924,500 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc v. Apex Beam Technologies LLCInstitutedPTAB · Sep 14, 2023 · IPR2023-00598 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted review of claims 1–20 on all grounds, finding a reasonable likelihood that claims would be shown unpatentable as obvious over You and Liu, with Mallick added for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (designated precedential). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),2 which provides 2 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). Petitioner stipulates that, upon institution of inter partes review in this proceeding, it will not pursue in the Related Litigation “the specific grounds [asserted in IPR2023-00598], or . . . any other ground . . . that was raised or could have been reasonably raised.” Ex. 1038, 1 (alterations in original). Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s assertions and supporting evidence. For the reasons discussed below, and based on the record before us, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one challenged claim would have been obvious in view of the combination of You and Liu. 1. Independent Claim 1 Petitioner relies on You to disclose a method substantially as recited” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“three different aspects of the time-frequency resource associated with monitoring a paging message: slot locations in the time domain (id. at 47–48 (citing Ex. 1006 ¶¶ 44–45, 49, 57, 95, 143, Fig. 2; Ex. 1002 ¶¶ 142–144)), the duration of each monitoring occasion (id. at 49 (citing Ex. 1006 ¶¶ 45, 47; Ex. 1002 ¶ 145)), and the number of monitoring occasions (id. at 49–50 (citing Ex. 1006 ¶¶ 45, Fig. 2; Ex. 1002 ¶ 146)). Petitioner argues that it would have been obvious to modify You’s M-PDCCH monitoring scheme from the subframe level to the slot level, as taught by Liu, to more efficiently allocate the time-frequency resources in the control region. Id. at 31–32 (citing Ex. 1005 ¶ 184; Ex. 1006 ¶¶ 2, 48, 62; Ex. 1002 ¶ 114); see also id. at 29–31, 50–51 (presenting additional rationales for modifying You in view of Liu’s teachings).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not see an explicit definition of “subband” in the ’767 patent as asserted by Patent Owner. However, we agree on this record that the ordinary and customary meaning of “subband” as used in the ’767 patent is a subset of the available frequency band. See, e.g., Ex. 1001, 2:28–29 (“The first subband includes a positive integer number of consecutive subcarriers in frequency domain.”), Fig. 6 (illustrating three subbands); see also Ex. 1005 ¶ 176 (describing a subband as a narrowband of frequency available in a cell); Ex. 1002 ¶ 68 (describing 5G systems as dividing “an available bandwidth . . . between four subbands ‘BW’ with 7.5, 15, 30, and 60 kHz subcarrier spacings, respectively”); Pet. 42 (mapping You’s “reduced UE downlink and uplink bandwidth” to the recited subband). For purposes of this Decision, and based on the record before us, we determine that no further construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,462,767 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Sep 12, 2023 · IPR2023-00556 · APJ Garth D Baer · IPR · Institution
Instituted IPR of claims 1–30 on all grounds: the Board found a reasonable likelihood that claims 1–13, 15–27, 29, and 30 were obvious over Kester and Kennedy, and claims 14 and 28 over Kester, Kennedy, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“circumstances, we treat this factor as weighing slightly in favor of denying institution.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the 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). Patent Owner has not demonstrated that this case satisfies the first part of the Advanced Bionics framework. It is undisputed that Petitioner’s combination of references was not of record during the ’389 patent’s prosecution because two of the three references are new and Patent Owner does not assert those new references are cumulative to any that were already before the Office. See Prelim. Resp. 31–33. Thus, the same art was not previously before the Office. Nor has Patent Owner shown that the same or substantially the same arguments were previously presented to the office. Even if Patent Owner is correct that the examiner did not identify Kester as disclosing any particular limitation of the independent claims, it does follow that the examiner actually considered that issue. To the contrary, because the examiner concluded that other references taught the independent claims’ elements, there was no need to consider whether Kester did as well. See Ex. 1002, 158–59. In these circumstances, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction for any claim terms. Pet. 6; Prelim. Resp. 28–29. We agree that no claim terms require express construction to determine whether to institute inter partes review. 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 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,726,389 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Sep 7, 2023 · IPR2023-00582 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1 and 6–8 and all petition grounds, finding a reasonable likelihood of obviousness for claims 1, 6, and 8 over Amirijoo and 3GPP TR 32.816.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“With that caveat, having reviewed Petitioner’s arguments and supporting evidence in this present record, we determine the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Amirijoo and 3GPP TR 32.816.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11 (citing Mahon Decl. ¶¶ 31–37). Patent Owner does not contest Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 21–22. 2 The record does not include evidence or argument regarding objective indicia of nonobviousness. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Petitioner’s construction is presented without any consideration of the intrinsic record and is based solely on extrinsic evidence (PO’s infringement contentions). At this stage, this construction appears overly broad and we are not persuaded that it is correct. The “detected user terminals” of claim 7 are, according to claim 1, “user terminals to be transferred from the first wireless access node of the first wireless access network.” Ex. 1001, 11:57– 59 (emphasis added). Thus, the detector of claim 1 has already identified the user terminal as located somewhere within “the cell in which a terminal is operating.” To construe claim 7 as merely again ascertaining that the user terminal is somewhere within its cell appears to be a redundancy that serves no purpose. Considering the intrinsic evidence, the location information described in illustrative embodiments of the ’560 patent is information generated by GPS module 25 or “by means of measurements using the first and/or the second wireless access network.” Ex. 1001, 5:25–30, 9:59–62. As explained in the ’560 patent: This location information can be useful e.g. in identifying where handover regions exist, and in solving location-specific outages or problems, e.g. dropped calls due to missing neighbour. It may also be useful when an operator changes configuration (optimisation of downlink power, antenna tilt, etc) and wants to measure the effect on the cells relevant for inter-RAT cell change or handover. Ex. 1001, 5:30–42. Thus, the “location” of claim 7 is the actual location of the “detected user terminals” within the cell in which the terminals are operating.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,660,560 - Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · Aug 21, 2023 · IPR2023-00496 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–14, finding a reasonable likelihood that Diener and Bergstrom render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s undisputed reasons for combining Diener and Bergstrom are sufficiently persuasive for institution. Petitioner’s undisputed arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (Pet. 29– 31) also are sufficient for purposes of institution.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not filed Preliminary Response. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’780 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Based on the record at this early stage in the proceeding, for purposes of this Decision, we preliminarily adopt Petitioner’s constructions, which are consistent with the intrinsic record, as set forth below. Claim Term Adopted Construction “short term” “on the order of seconds” “long term” “on the order of weeks, or greater” “self interference”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage, Petitioner’s undisputed reasons for combining Diener and Bergstrom are sufficiently persuasive for institution. Petitioner’s undisputed arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (Pet. 29– 31) also are sufficient for purposes of institution.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,345,780 - Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · Aug 8, 2023 · IPR2023-00542 · APJ Scott Raevsky · IPR · Institution
Instituted inter partes review of claims 1–7, 9, and 10 on all asserted grounds; the Board found a reasonable likelihood that Marek and Skarine render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Turning to our analysis, we note at the outset that General Plastic is inapplicable here because Petitioner filed parallel, not serial, petitions. See General Plastic, Paper 19 at 10 (“Applying these factors to the follow-on petitions, we conclude that the circumstances do not warrant institution of inter partes reviews.” (emphasis added)). Although our discretion to institute under 35 U.S.C. § 314(a) is at issue, the more appropriate inquiry here is explained in the Trial Practice Guide as follows: Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. CTPG 59. The Trial Practice Guide further states that when submitting parallel petitions, Petitioner should submit a notice ranking petitions along with a succinct explanation of their differences, why the issues addressed by those differences are material, and why the Board should exercise its discretion to institute additional petitions. Id. at 60. Patent Owner’s preliminary responses in this and the ’543 petition argue for discretionary denial of the respective petition in light of the other petition having been filed. Patent Owner does not argue that both petitions should be discretionarily denied. Having considered the issue in both petitions and based on Petitioner’s ranking, we decline to exercise our discretion to deny institution of this Petition. Accordingly, we consider this Petition on the merits and decide whether to discretionarily deny the second ranked ’543 petition based on the arguments presented in that proceeding.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s reasons for combining Marek and Skarine are sufficiently persuasive for institution. For instance, we agree with Petitioner, on this record, that “a POSITA would have been motivated to pursue this implementation because doing so enables the mobile device to be used to carry out ‘voice communications,’ e.g., phone calls or voicemail, which was conventional mobile device functionality.” Pet. 15. We further agree with Petitioner, at this stage, that this implementation would merely be “the application of known techniques (e.g., a speaker and microphone communicatively connected to a mobile device processor) by a known system (e.g., Marek’s untrusted host mobile device) to yield predictable results (e.g., a mobile device with conventional audio capabilities).” Id. at 16. Patent Owner’s arguments are unavailing at this stage. Although Patent Owner is correct that the challenged claims do not recite an “audio interface,” Petitioner applies Skarine’s speaker and microphone disclosure to the claimed “non-secure human/machine interface.” Pet. 14, 57. Patent Owner does not dispute that a speaker and microphone constitute a non-secure human/machine interface, and on this record, we agree with Petitioner that they do. Thus, Patent Owner’s first contention that the combination is improper because the claims do not recite an audio interface is inapposite because on this record, Skarine’s audio interface discloses the claimed non-secure human/machine interface. Patent Owner’s second contention, that there is no motivation to combine because “Marek already teaches wireless communications with a Secure Computing Module interfaced with an untrusted PDA” is also unavailing on this record. See Prelim. Resp. 11. On this preliminary record, we determine that Marek’s wireless communications disclosure does not undermine Petitioner’s rationale to combine Skarine’s speaker and microphone with Marek. See Pet. 14. Patent Owner provides no explanation for this argument. See Prelim. Resp. 11. Accordingly, on this record, Petitioner’s rationale to combine is” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person of ordinary skill in the art . . . (“POSITA”) would have been a person with a Bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and at least two years of work experience with computer architecture and system security, including cryptography. Greater education or greater experience could compensate for a deficiency in either of these criteria. Pet. 4 (citing Ex. 1003 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’399 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. Pet. 4–5; see generally Prelim. Resp. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,765,399 - PTAB · Aug 4, 2023 · PGR2023-00016 · APJ Stephen E Belisle · PGR · Institution
The Board instituted PGR on claims 1–3, 5, 7–10, 12, 14–17, and 19 based on a reasonable likelihood that the claims are unpatentable across the petition’s grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2022). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has established that it is more likely than not that at least one claim of the ’705 patent is unpatentable. Accordingly, we institute a post-grant review as to all challenged claims of the ’705 patent on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pertinence of Bruning, in particular, or of any reference Patent Owner asserts is substantially similar to Evanicky, Lee, Doheny and Van Winkle or of the asserted combinations thereof, and did not issue a rejection based on their disclosures or combined teachings, and that this constitutes Examiner error. See Pet. 5–6, 10–11. Indeed, in the Final Written Decision in PGR2022-00009, the Board determined that Bruning anticipates independent claims 1, 8 and 15 and many other dependent claims of the parent ’341 patent, which claims are substantially similar to the challenged claims in this case involving the child ’705 patent. Ex. 1032, 52–68. Also, as discussed below in Section V, we determine that Petitioner has established that it is more likely than not that claims 1–3, 5, 7–10, 12, 14–17, and 19 of the ’705 patent are unpatentable. We also find the Examiner’s error here is further compounded by not having identified that the claims of the ’705 patent are not entitled to claim priority to any of the filing dates of any of its ancestor applications, and thus, not having searched for and considered a substantial pool of prior art. See supra Sections III.B, III.C. Accordingly, Becton, Dickinson factor (e) weighs against exercising discretion to deny institution under § 325(d).” slip op. at 37
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateInstituted
“Pet. 11–15), we determine that the ’215 provisional (and other Pre-AIA Applications) does not provide sufficient written description support to reasonably convey to the skilled artisan that, as of the filing date of the ’215 provisional, the inventors had possession of the limitation “wherein the switch is electrically connected between the DC voltage output and at least one of the first operating LED circuit or the at least one additional LED circuit,” as recited in claim 1. See Ariad Pharm., 598 F.3d at 1351. Accordingly, on this record, we are persuaded that the ’215 provisional lacks sufficient written description support for the inventions recited in claims 1–20 of the ’705 patent. Thus, on this record, claims 1–20 of the ’705 patent are not entitled to priority and, for purposes of institution, do not receive an effective filing date as early as that of the ’597 PCT (i.e., 2010) or any other Pre-AIA Application.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“h) Conclusion At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence sufficiently supports Petitioner’s contention that independent claim 15 is unpatentable as anticipated by Bruning. Accordingly, at this stage of the proceeding, we are persuaded that Petitioner has shown that it is more likely than not that independent claim 15 is anticipated by Bruning.” slip op. at 74
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,297,705 - PTAB · Aug 3, 2023 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Institution
The Board instituted inter partes review of claims 1–3 and 12–14 on all petitioned grounds: obviousness over Osterhout and over Mann ’526 with Vaissie.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We conclude Petitioner’s formulation of the level of ordinary skill in the art is sufficiently supported for the purpose of institution by the evidence of record. That supporting evidence includes Dr. LaViola’s testimony, which is based on his review of the documentary evidence of record, as well as his own experience in the fields of virtual reality and augmented reality including motion tracking. See Ex. 1003 ¶¶ 2–3 (Dr. LaViola’s review of the documentary evidence, and the bases for his opinions); id. ¶¶ 9–19 (Dr. LaViola’s experience with virtual reality, augmented reality, and motion tracking). Dr. LaViola’s testimony as to the level of ordinary skill in the art formulation (id. ¶ 21) must be viewed in that light, which Patent Owner’s argument overlooks. Further, Dr. LaViola’s review of the documentary evidence of record and his experience provide the facts that support his opinion, as set forth in the Board’s informative Jud decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Leibel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (when the patent specification discloses a single embodiment, the claims of a patent will not be read constrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction). In contrast to Patent Owner’s proposed construction, independent claims 1 and 12 merely recite “in communication with” and do not limit the communication to a specific directionality. See Ex. 1001, 14:24–25, 15:12–14. For the foregoing reasons, we do not adopt Patent Owner’s proposed construction and instead construe “in communication with” according to its ordinary and customary meaning. Further, we determine that it is not necessary to expressly construe any other claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“For the purpose of this decision and based on Petitioner’s citations to Mann ’526, Vaissie, and Dr. LaViola’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Mann ’526 with Vaissie’s teachings of optical parameter measurements. See Pet. 56–59; KSR, 550 U.S. at 418. Petitioner contends that a person of ordinary skill in the art would have been motivated to combine Mann ’526 with the teachings of Vaissie because Vaissie explains that implementing eye tracking in headmounted devices can advantageously allow physically challenged people to interact with such devices and to realize the advantages of enhancing local images, correcting depth perception difficulties, and increasing resolution of visual displays. See Pet. 58–59 (citing Ex. 1003 ¶¶ 148–150; Ex. 1006, 24:66–25:31, Fig. 10; Ex. 1007, 1:40–53, 1:56–58). limitation. See Prelim. Resp. 19–27. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the purpose of institution, Petitioner shows sufficiently that these limitations are satisfied by the combined teachings of Mann ’526 and Vaissie.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purpose of this decision and based on Petitioner’s citations to Mann ’526, Vaissie, and Dr. LaViola’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Mann ’526 with Vaissie’s teachings of optical parameter measurements. See Pet. 56–59; KSR, 550 U.S. at 418. Petitioner contends that a person of ordinary skill in the art would have been motivated to combine Mann ’526 with the teachings of Vaissie because Vaissie explains that implementing eye tracking in headmounted devices can advantageously allow physically challenged people to interact with such devices and to realize the advantages of enhancing local images, correcting depth perception difficulties, and increasing resolution of visual displays. See Pet. 58–59 (citing Ex. 1003 ¶¶ 148–150; Ex. 1006, 24:66–25:31, Fig. 10; Ex. 1007, 1:40–53, 1:56–58). limitation. See Prelim. Resp. 19–27. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the purpose of institution, Petitioner shows sufficiently that these limitations are satisfied by the combined teachings of Mann ’526 and Vaissie.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,696,113 - PTAB · Aug 3, 2023 · IPR2023-00494 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–6, 8, 11, 17, and 22 on the Mann ’895–Pemer obviousness ground; review of disclaimed claims 7, 9, 10, and 15 was not instituted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to at least claim 1. We therefore institute a review of all of these challenged claims.” slip op. at 9
- Adverse judgmentAdverse judgmentOther
“disclaimed claims.” 37 C.F.R. § 42.107(e). As a result of the statutory disclaimer, claims 7, 9, 10, and 15 are no longer regarded as claims challenged in the Petition. See Vectra, 162 F.3d at 1383 (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372–75 (Fed. Cir. 2019) (disclaimer of claims during District Court patent infringement litigation “mooted any controversy” over the disclaimed claims, ending the Article III case or controversy requirement for District Court jurisdiction). In considering Federal Circuit precedent and our rules, we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist. Our conclusion is consistent with the statutory scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a) and is not at odds with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). See, e.g., SAS, 138 S. Ct. at 1357 (recognizing that “the claims challenged ‘in the petition’ will not always survive to the end of the case; some may drop out thanks to the patent owner’s actions”). Accordingly, we treat claims 7, 9, 10, and 15 as having never been part of the ’929 patent, such that Petitioner cannot seek inter partes review of those claims. Thus, we deny institution of review as to whether disclaimed claims 7, 9, 10, and 15 are unpatentable as having been obvious over the combination of Mann ’895 and Pemer, and over Jannard.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We conclude Petitioner’s POSITA formulation is sufficiently supported by the evidence of record for purposes of institution. That supporting evidence includes the testimony of Dr. LaViola, which is based on his review of the documentary evidence of record, as well as his own experience in the fields of virtual reality and augmented reality including motion tracking. See Ex. 1003 ¶¶ 2–3 (Dr. LaViola’s review of the documentary evidence, and the bases for his opinions); id. ¶¶ 9–19 (Dr. LaViola’s experience with virtual reality, augmented reality, and motion tracking). Dr. LaViola’s testimony as to the POSITA formulation (id. ¶ 21) must be viewed in that light, which Patent Owner’s argument overlooks. Further, Dr. LaViola’s review of the documentary evidence of record and his experience provide the facts that support his opinion, as set forth in the Board’s informative Jud decision. Petitioner’s POSITA formulation further is consistent with the ’929 patent (summarized in Section II.B above) and the prior art of record, namely Mann ’895 and Pemer (summarized in Sections III.B.4 and III.B.5 below). See Best Med., 46 F.4th at 1353 (stating that the types of problems encountered in the art, the prior art solutions to those problems, and the patent’s purpose, can all be considered when determining the appropriate level of skill in the art); Okajima, 261 F.3d at 1355 (stating that “the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (citations omitted)); Xerox at 8 (“[W]e presume that the cited prior art references reflect the level of ordinary skill at the time of the invention.”) (precedential, citing Okajima, 261 F.3d at 1355).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the arguments and evidence presented at this stage of the proceeding, we determine no explicit construction of any claim term is needed for purposes of this Decision. 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)). Concerning the “eye sensor” limitation addressed in the Preliminary Response, the District Court adopted the “[p]lain and ordinary meaning,” without specifying what that meaning might be. Ex. 1015, 1.4 This was Patent Owner’s proposed construction, opposing Petitioner’s proposed construction of “the eye sensor making the inactive circuitry become active, in response to eye motion of a user.” Pet. 4–5; see Ex. 1008, 15–16; Ex. 1009, 13–15; Ex. 1010, 11–13. However, as noted above, Petitioner does not press for us to apply Petitioner’s District Court construction in this proceeding. See Pet. 3–5. Thus, the present record does not present any claim construction disputes for us to resolve in the context of considering Petitioner’s unpatentability contentions (particularly, obviousness over Mann ’895 and Pemer, discussed below). Further, we do not discern any need to construe the “eye sensor” limitation in order to decide whether to institute review as to those contentions.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,010,929
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.