- Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00311 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–22 on all three asserted § 103 grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Ex. 1003, Clark Decl. ¶ 22). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶ 22).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“without waiving its right to pursue alternative constructions in any future litigation.” Pet. 8. We understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under the Phillips standard applied by the district courts. 37 C.F.R. §§ 42.100(b), 42.104(b)(4). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,109,375 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00307 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20 because Datavant showed a reasonable likelihood of prevailing on each asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. The ’651 patent issued from a continuation application filed on May 26, 2017 (Ex. 1001, code (22)), which is a continuation of applications filed on April 22, 2016 and November 18, 2013, and claims priority under 35 U.S.C. § 120 as a continuation-in-part to an application filed on June 30, 2010. Id. at code (63), 1:7–21. Therefore, we apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 Murphy and Church, “A Security Architecture for Query Tools Used to Access Large Biomedical Databases,” in Bio*medical Informatics: One Discipline, AMIA 2002 Symposium Proceedings 552–56 (Isaac S. Kohane, ed., 2002) (Ex. 1009) 4 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 5 US. Pat. Appl. Publ. No. US 2002/0111833 (Ex. 1007) 6 U.S. Pat. No. 7,519,591 (Ex. 1008) networking and/or data records management.” Pet. 8. Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. at 8–9 (citing Ex. 1003, Clark Decl. ¶¶ 22–25). The level of ordinary skill in the art usually is evidenced by the references themselves. 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). For purposes of this Decision, we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’651 patent and the references.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15–16 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“l) Conclusion As To Representative Clam 7 In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate a person of ordinary skill would have been motivated to combine the teachings of Evenhaim and Murphy and their combined teachings would have disclosed or suggested all the limitations of claim 7 to a person of ordinary skill in the art. Independent Claims 1 and 14 Independent claim 1 is drawn to a method and recites steps that correspond to the operations recited in claim 7. Independent claim 14 is drawn to a computer readable storage medium storing instructions executable by a processing device to perform operations that correspond to those in claim 7. For the same reasons as those addressed in our discussion of claim 7, we determine that Petitioner has demonstrated that Evenhaim and Murphy teach the limitations of independent claims 1 and 14.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,965,651 - PTAB · Jun 21, 2024 · IPR2024-00343 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of claims 1–7 of the ’052 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board has set forth a two-part framework for this determination 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 [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.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“B. Analysis The Interim Procedure 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.”” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In this proceeding, Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. In the Qualcomm litigation, however, Patent Owner described a person of ordinary skill in the art as having: a Bachelor of Science (or equivalent) degree in electrical engineering, computer engineering, or a related field, and 2–3 years of work experience in very large-scale integrated (“VLSI”) systems, such as application-specific integrated circuits (“ASICs”), application-specific standard parts (“ASSPs”), system-on-chip (“SoC”), or field programmable gate arrays (“FPGAs”), and has an understanding of on-chip interconnection networks. Ex. 1017, 11. In this proceeding, Petitioner’s definition is uncontested and appears consistent with the level of skill reflected in the specification of the ’052 patent (“Specification”) and in the asserted prior-art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition. We note, however, that we would reach the same conclusions in this Decision if we were to adopt the definition that Patent Owner set forth in the Qualcomm litigation. To the extent the parties dispute the definition of an ordinarily skilled artisan during” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,594,052 - PTAB · Jun 21, 2024 · IPR2024-00338 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–6 and 9–16 on all asserted challenges, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. GENERAL PRINCIPLES “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). In an inter partes review, a petitioner has “the burden to prove” that a reference “is a printed publication.” Id.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“combined throughput and latency guarantee (GT), or be best effort (BE), with an unspecified finite latency upper bound,” an ordinarily skilled artisan would have understood that one channel is “independently configurable” for “a combined throughput and latency guarantee (GT)” and that another channel is “independently configurable” for “best effort (BE), with an unspecified finite latency upper bound.” Ex. 1003 ¶ 103; Ex. 1005, 3. Petitioner quotes that disclosure in Goossens2002 when explaining what an ordinarily skilled artisan would have understood. Pet. 28 (quoting Ex. 1005, 3). Accordingly, we disagree with Patent Owner that Petitioner provides “no explanation” why an ordinarily skilled artisan would have” slip op. at 44
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 20, 2024 · IPR2024-00339 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 12 was obvious over any of the four asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to claim 12. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has not met this standard and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“E. Level of Skill in the Art Petitioner argues that at the time of the alleged invention an ordinarily skilled artisan would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or an equivalent technical degree, and two or more years of experience with system-on-chip, interconnect, or networking technologies. Pet. 8. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. After reviewing the record, we adopt Petitioner’s definition for the level of skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION AND THE DISTRICT COURT’S DETERMINATION OF INDEFINITENESS Neither party requests that we construe the optimal moment limitation. Pet. 8–9; Prelim. Resp. 25–28. Further, we see no need to construe this limitation sua sponte. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). For background, however, we address the claim” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“optimal moment limitation is subjective (and repeating that assertion in its Petition), Petitioner provides no explanation of why Bahadiroglu’s use of that term would have a meaning falling within the scope of the subjective meaning for that term in claim 12. Pet. 28–31 & n.4; Prelim. Reply 3–5. Petitioner has not explained what that subjective meaning of optimal is in the ’800 patent’s claims or why that term as used in Bahadiroglu would satisfy that subjective meaning in the ’800 patent’s claims. Pet. 28–31; Prelim. Reply 3–5. Thus, Petitioner’s showing is insufficient. Second, Petitioner has not explained why the disclosure of an optimal interval teaches or suggests transmission at an optimal time. Pet. 28–31. Spacing transmissions apart by an optimal interval would not inherently result in transmissions being performed at the optimal times. The optimal interval could involve transmissions that are not at the optimal times (when time is viewed by itself), and transmissions at the optimal times may not have the optimal interval separating them. We recognize that it is possible that in some, or many, cases an optimal interval would teach or at least suggest transmissions at optimal times. Petitioner, however, has not explained why it does in this case. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,086,800 - Qualcomm Incorporated / Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 17, 2024 · IPR2024-00355 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in view of the Samsung litigation and the Qualcomm litigation. See Prelim. Resp. 10–22; supra § II.B. Petitioner argues that we should decline to exercise our discretion under § 314(a) to deny institution. See Pet. 82–84. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra §§ IV.E–IV.I. Hence, we do not consider discretionary denial under § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of analysis, we adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’893 patent as well as the asserted prior art. For instance, “a master’s degree” and “three years of work experience” would have allowed someone to understand the ’893 patent as well as the asserted prior art. See Ex. 1003 ¶ 32. Moreover, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Hence, “it is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“for “each data package comprising N data elements” is “significantly broader” than Petitioner’s proposed construction. See Pet. 9–10; Ex. 1026, 25; Ex. 1027 ¶ 164; Ex. 2034, 26. To decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial, we must determine the meaning of “each data package comprising N data elements.” Based on the current record, we agree with Petitioner that “each data package comprising N data elements” means “every data package communicated by the network stations has a fixed size of N data elements.”” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,072,893 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00167 · APJ Julia Heaney · IPR · Final written decision
Claims 1–24 are unpatentable; the Board finds the asserted § 103 grounds proven for each claim and dismisses the collateral-estoppel motion as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, 944 F.3d at 1373 (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[I]f the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Coextensive “mean[s] that the product ‘is the invention disclosed and claimed’. . . . A product is ‘essentially the claimed invention when, for example, the unclaimed features amount to nothing more than additional insignificant features.’” Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1276–77 (Fed. Cir. 2021) (emphasis and citation omitted).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates that a person of ordinary skill would have had a reason to modify Richardson’s jump starter with Lai’s overcharge-protection circuit. Pet. 69. In particular, Petitioner shows that in order to protect against dangerous overcharging conditions in Richardson’s jump starter, a person of ordinary skill would have replaced diode 35 in Richardson with a switched overcharge-protection circuit, as taught by Lai, with the predictable result of cutting off recharging of jump starter batteries 22 from vehicle battery 28 in the event an over voltage protection threshold is crossed. See Ex. 1003 ¶ 174. Patent Owner’s argument that Richardson teaches away is not persuasive. Richardson’s teaching of recharging techniques supports the combination with Lai, rather than teaches away, because a system such as Richardson’s that permits recharging would have a need for safety protection and excessive recharging prevention. Further, claim 11 does not require preventing recharging in every situation, but rather only prevents recharging of “a normal voltage of the battery.” Ex. 1001, 6:11–12. In any event, Richardson does not criticize, discredit or discourage investigation into preventing recharging. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed).” slip op. at 35
Patent outcomesUS 11,235,673 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,235,673 - Keysight Technologies, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Jun 3, 2024 · IPR2023-00448 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable under § 103; claims 6, 14, 22, 30, and 33 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In the Institution Decision, we instituted review based on all challenged claims and all challenges included in the Petition. Paper 7 (“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable but has not shown by a preponderance of the evidence that claims 6, 14, 22, 30, and 33 are unpatentable. See 35 U.S.C. § 316(e) (2018).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, the combined disclosures in Law and” slip op. at 86
Patent outcomesUS 11,012,474 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,012,474 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · May 13, 2024 · IPR2024-00226 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted obviousness grounds based on Evenhaim; Evenhaim with Settimi; Dick with Landi; and Dick, Landi, with Murphy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (2018) (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”). We therefore institute inter partes review as to all of the challenged claims of the ’641 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (2023) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Clark Decl. ¶ 22). Petitioner adds that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“from Patent Owner’s claim-construction brief in the related district court litigation and “adopts these constructions for this proceeding.” Pet. 8 (citing Ex. 1010, 9–20). Patent Owner’s brief identifies these as “disputed claim terms.” Ex. 1010, i (Table of Contents). The brief indicates that Petitioner disputes Patent Owner’s construction for each of the terms. Id. at 1 (referring to the parties’ Joint Claim Construction Statement). As Petitioner expressly “adopts these constructions for this proceeding” (Pet. 8), we understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under 37 C.F.R. 42.104(b)(3) (2023). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp., 868 F.3d at 1017. Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 16
Claim constructioncites KSRPatents in suitUS 9,118,641 - Luminex International Co., Ltd. v. Signify Holdings B.V.Institution deniedPTAB · May 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Menard was a real party in interest served with an infringement complaint more than one year before the Petition was filed.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Thus, the evidence shows that: (1) Petitioner and Menard are parties to an agreement; (2) under the agreement, Petitioner supplies accused products to Menard; (3) the agreement includes an indemnity provision; (4) under the agreement, Menard made multiple demands for Petitioner to “indemnify or defend as a matter of first defense”; and (5) Petitioner responded to Menard’s multiple demands by, among other things, filing the Petition challenging the claims in the ’336 patent. See Ex. 2001 ¶¶ 21, 24–26, 28–29, 32–33, 35; Ex. 2002, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 2013, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 3003 ¶¶ 21, 24–26, 28–29, 32–33, 35. That Petitioner responded to Menard’s multiple demands for Petitioner to “indemnify or defend as a matter of first defense” by filing the Petition shows that the Petition was filed at Menard’s “behest.” Specifically, Menard demanded defense from infringement liability, and Petitioner responded by initiating this proceeding seeking to free Menard from infringement liability for all 20 claims in the ’336 patent. See Pet. 15–89.” slip op. at 36
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“For the real-party-in-interest analysis, we initially consider “whether a petition has been filed at a nonparty’s ‘behest,’” i.e., “the heart of the inquiry.” Uniloc 2017, 989 F.3d at 1027–28; AIT, 897 F.3d at 1351; CTPG at 14. In its third-party complaints, Menard alleged that it and Petitioner “are parties to a Menards Customer Returns, Defective Goods Policy and Conditions of Order Agreement” that requires Petitioner to “indemnify, defend and hold harmless Menard from and against any claims, litigation, or suits,” including “patent infringement arising from Menard’s use, sale or offering for sale of any goods provided by” Petitioner. Ex. 2001 ¶¶ 21, 24, 26, 28; Ex. 3003 ¶¶ 21, 24, 26, 28. Menard also alleged that the Conditions of Order Agreement requires Petitioner to “indemnify or defend as a matter of first defense and payment, not as a matter of reimbursement.” Ex. 2001 ¶ 29; Ex. 3003 ¶ 29.” slip op. at 35
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Discretionary denialPatents in suitUS 10,299,336
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.