- Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01335 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 under the petition’s § 103 grounds and joined Apple to IPR2024-00234.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of these representations by Petitioner, and Patent Owner’s statement that it does not oppose joinder, and having reviewed the Petition, we determine that, under the current circumstances, it is appropriate to exercise our discretion to institute inter partes review of the challenged claims based upon the same grounds authorized and for the same reasons discussed in the Google DI (Google IPR, Paper 10). Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the Petition for the same reasons given in the Google DI considering the same issues.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources.” slip op. at 7
NonePatents in suitUS 9,298,905 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01398 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on the petitioned grounds and joined Apple Inc. to IPR2024-00573.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Microsoft IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Microsoft IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Microsoft IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Microsoft IPR (IPR2024-00573).” slip op. at 7
NonePatents in suitUS 8,646,042 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01334 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 under the asserted § 103 grounds and granted Apple’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Institution of Inter Partes Review This Petition is substantially identical to the petition in the Google IPR, challenging the same patent and claims, based on the same grounds of unpatentability, and relying upon the same evidence (including the same prior art combinations supported by the same expert declaration). According to Petitioner, “the 1334 Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Google Petition.” Joinder Mot. 3; accord id. at 5 (“The Google Petition and 1334 Petition” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Google IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00233).” slip op. at 7
NonePatents in suitUS 8,886,954 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01333 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–6 and 8–17 under the petition’s § 103 grounds and granted Apple’s motion to join IPR2024-00232.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons explained below, we institute an inter partes review of the ’730 patent. We also join Petitioner as a party to IPR2024-00232.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial.” slip op. at 7
NonePatents in suitUS 8,352,730 - Google LLC v. Safecast Limited LLCAll claims unpatentablePTAB · Oct 3, 2024 · IPR2023-00652 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–4, 6–9, and 12–15 are unpatentable as obvious over Plotnick and Parekh; the Board did not reach the Plotnick-only ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an artisan of “ordinary skill in the art would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent education or work experience, and at least two years of work or research experience in multimedia systems.” Pet. 8–9 (citing Ex. 1002 ¶¶ 41–45). In the Preliminary Response, Patent Owner “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’302 Patent as well as the asserted prior art.” Prelim. Resp. 8. Patent Owner does not address Petitioner’s proposed level of skill in the Response. See Reply 1; see generally Response. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art. As Patent Owner argues, Petitioner’s proposed art and ’302 patent specification, except that we delete the qualifier “at least” to eliminate vagueness as to the stated amount of experience.” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Petitioner persuasively explains further as follows: By the 2000s, the V-chip was known by POSITAs, and even in mainstream media, as a technology that would enable parents to program restrictions in their TVs to block offensive content from being played to their children. [Ex. 1040] ¶226. Thus, the motivation to reduce the risk of minors being exposed to inappropriate content was well-known by POSITAs at the time of the invention. Ex-1040 ¶227. This motivation applied equally, if not even more so, when PVR technology made it possible to record content for time-shifted viewing and thus made it possible to record late night content and for playback during the day. Ex-1040 ¶227. Plotnick itself describes that “the relative appropriateness of the prepared ad schedule may change as circumstances change” and that “[s]uch circumstances may include, but are not limited to, the time of day, program or type of program being watched channel selection, identity of the current viewer, and timing/duration of the upcoming avail.” Ex- 1006 ¶51 (incorporated by reference into Ex-1005 ¶¶2–14, 36, 194); Ex-1040 ¶227. Plotnick thus teaches and provides a motivation to ensure that time-shifted advertisements are appropriate for the time of day that they are played, including considerations based on the identity of the viewer. Id. And a POSITA would have looked to common standards, including local broadcasting regulations, to determine what timing and general public as appropriate. Ex-1040 ¶228. Reply 14–15. As Petitioner shows, Plotnick, viewed through the lens of a person of ordinary skill in the art aware of well-known program restrictions to block offensive TV content from children, teaches restricting time-shifted viewing of inappropriate ads based on the time of day and identity of the viewer in order to comply with local regulations, thereby further suggesting implementing Parekh’s FCC time restrictions. Accordingly, as outlined above, the record supports Petitioner’s showing based on the combined teachings of the references.” slip op. at 35
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board own§112(f) appliesDecided for petitioner
“claims 1 and 12, Petitioner contends that the corresponding structure is “hardware and/or software arranged to perform steps 102, 104, and 112 of FIG. 8 of the ’302 Patent, as described at 6:40–62 and 7:17–27 of the specification.” Pet. 16–17. Tracking the claim language in limitations 1.e.1 and 1.f, Petitioner identifies the recited function of the “control means” as follows: (1) “to read said first field and said clock signal and said rules database”; (2) “to apply said local broadcasting time regulation to each advertisement before said advertisement is shown”; and (3) “to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing.” Id. at 16. However, steps 102, 104, and 112 of Figure 8 represent structure do not clearly link to recited functions (1)–(3) of the control means. First, steps required by claim 1. See Ex. 1008, Fig. 8 (Step 102 describing a “mix of adverts”; step 112 describing “record any key depressions”), 7:17–17 (describing other functionality not required by the claim 1). Second, to the extent the process flow of Figure 8 also represents some algorithmic structure, it is unclear how much of any such structure clearly links to the recited functions of claim 1––as opposed to the unclaimed functionality described in Figure 8. As we did in the Institution Decision, we construe the corresponding structure of the control means as PVR hardware and/or software arranged to perform the recited functions of (1) to read said first field and said clock signal and said rules database; (2) to apply said local broadcasting time regulation to each advertisement before said advertisement is shown; and (3) to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing. See Inst. Dec. 12. It is uncertain whether the specification clearly links specific hardware and/or software to these claimed functions, other than generally disclosing a PVR, which Petitioner also points to as corresponding structure. See Pet. 17 (pointing to the disclosed PVR as performing disclosed steps 102, 104, 112); Ex. 1001, 4:43 (describing “a PVR 60 for use in a system according to the invention” according to Figure 4 (described above)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“asserting that Plotnick does not teach a first field with “a local broadcasting time,” “the time of day at which said advertisement may be shown,” or similar specific language, limitation 1.c.1 does not require such specificity. PO Resp. 10; Sur-reply 5–6, 18.5 Rather, limitation 1.c.1 recites “a header comprising a first field related to a local broadcasting time regulation,” as Petitioner argues. See Reply 5. Like the claim language, the ’302 patent specification also does not support Patent Owner’s narrow claim construction requiring a specific form of a time of day restriction in the header’s first frame. The specification generally states that “[e]ach advert . . . contains a header . . . which records . . . any restriction on the time of day at which it may be viewed.” Ex. 1001, 3:67–4:24 (emphasis stated). It also generally states that “[t]he time of day 5 The Response at page 10 obliquely slips in what appears to be a claim construction argument in one sentence and the Sur-reply adds pages to expand the argument. Compare Response 10 (possible claim construction argument) and Reply 5–6 (refuting Patent Owner’s argument by relying on “the words of the claims), with Sur-reply 4–6 (expounding on the claim construction argument), 15–19 (similar). regulations.” Id. at 3:14–15 (emphasis added). In any event, even if these embodiments specify a certain form for the time of day information or restriction (they do not), limitation 1.c.1 is broader than these embodiments because it does not require storing a specific form for a time of day restriction or information in the first header frame either directly or by implication. The Sur-reply points to Table 1 of the ’302 specification, but Table 1 lists several items, including a “Field Name” that includes “Warnings,” namely, “Keywords to match against viewing regulations.” See id. at 4:1–22 (Table1, “Fields in advertisement headers”); Sur-reply 5–6 (arguing without support that “claim 1 requires the ‘first field’ to have ‘a local broadcasting time’ of the advertisement which is regulated by the ‘local broadcasting time regulation’), 18 (arguing that (1) “[n]either Parekh nor Plotnick discloses ‘the metadata of an advertisement includes the local broadcasting time regulation,’” and (2) “‘the time of day at which said advertisement may be shown’ is not included in the metadata of the combination of Plotnick and Parekh.”).6 Patent Owner appears to rely on the disclosure of the “Time of Day” Field Name in Table 1 and describes “[c]ode to indicate time of day when advert may be shown.” See Sur-reply 5–6 (reproducing Ex. 1001, Table 1). Again, limitation 1.c.1 is broader than various descriptions of different types of header fields described in the specification, for example, it 6 These two Sur-reply arguments contradict each other by implying the metadata (claimed header first frame) must include both “the local broadcasting time regulation” and “the time of day at which said advertisement must be shown.” In any case, as determined herein, limitation 1.c.1 requires neither.” slip op. at 26
Patent outcomesUS 9,392,302 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,392,302 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See 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
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00704 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because neither Ground 1 nor Ground 2 showed a reasonable likelihood of proving any challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018). For the reasons below, we determine the information presented in the Petition does not show a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’580 patent, and we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“interpretations are appropriate. Controlling law requires construing claims in an inter partes review 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) (2021). “In determining the meaning of [a] disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). The Petition does not even purport to apply this controlling law with its Ground 1. In fact, Petitioner acknowledges that its Ground 1 does not apply a “proper” claim construction, describing Ground 1 in contrast to Ground 2 as follows: “Ground 1 is essentially based on what we read their infringement contentions to be, . . . Ground 2 [applies] what we view as the proper construction of the patent.” Ex. 1022, 7:17–8:16. Accordingly, based on this record, we determine Petitioner has not supported the claim interpretations on which its Ground 1 relies, and Petitioner therefore has not shown a reasonable likelihood that it would prevail in its challenge asserted as Ground 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“But Petitioner states that in the combination presented in Ground 2, “a skilled artisan would have set the current limit threshold based on the current-handling capability of the VTM to protect the VTM from over-current.” Pet. 49–50. “In this circumstance, the PRM would never reach an over-current condition. Rather, the PRM would operate within its normal range.” Pet. 50 (citing Ex. 1003 ¶ 144) (emphasis added). But Petitioner’s description of the proposed combination—in which “the PRM would never reach an over-current condition”—cannot be reconciled with Petitioner’s showings for the “over-current” limitations, which require, e.g., “when the resonant converter generates the over-current” (limitation [1c]). For example, for limitation [1c], Petitioner states “when the VTM exceeds its normal operating current, the PRM (with a duty cycle current limiter as taught by Hwang) would reduce its duty cycle, which would reduce its output voltage and output current, and thus reduce the input voltage and current to the VTM.” Pet. 55–56 (citing Ex. 1003 ¶ 158). But Petitioner and its declarant both state that in the combination proposed in Ground 2, “the PRM would never reach an over-current conduction.” Pet. 50; Ex. 1003 ¶ 144; see Pet. 59 (addressing similar language in limitation [1c]), 61 (addressing limitation [13c]), 63 (addressing limitation [17d]). Petitioner does not explain how those positions can be reconciled, nor does Petitioner adequately explain, much less support, a claim interpretation that would be satisfied by a proposed combination in which the resonant converter never generates an over-current. Accordingly, we determine Petitioner has not shown a reasonable likelihood that it would prevail in the challenges presented as Petitioner’s Ground 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “(1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in the field of power engineering.” Pet. 11 (citing Ex. 1003 ¶¶ 41–42). Patent Owner does not specifically address the level of ordinary skill. At this stage, Petitioner’s proposal appears consistent with the problems and solutions in the ’580 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 6
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,580 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - Meta Platforms, Inc. v. Sitnet, LLCInstitutedPTAB · Sep 10, 2024 · IPR2024-00530 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–16, finding a reasonable likelihood that the claims would have been obvious over the four asserted Gage- and Shida-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis is guided by the USPTO Director’s Memorandum issued June 21, 2022, titled “Interim 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 (“Interim Procedure”). That Memorandum provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner 4 U.S. Patent Appl. Publication No. 2003/0162557 A1, published August 28, 2003, filed December 24, 2002 (Ex. 1006, “Shida”). 5 U.S. Patent Appl. Publication No. 2008/0208605 A1, published August 28, 2008, filed October 20, 2007 (Ex. 1007, “Sinha”). 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, i.e., a Sotera stipulation.” Interim Procedure 9. Petitioner has submitted such a stipulation. Paper 7, 10. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–16 of the ’345 patent to determine whether: 1) claims 1, 3–8, 10–13, 15, and 16 are unpatentable under 35 U.S.C. § 103 as obvious over Gage;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are unpersuaded by Patent Owner’s contentions that a “roll call query” is “an optional service provided by an ‘event node server.’” Prelim. Resp. 13; Prelim. Sur-reply 2–3. Although Patent Owner points to “examples” in the Specification in which “roll call query” is “detailed” (Prelim. Resp. 13), these portions of the Specification merely show exemplary embodiments and not a definition. That is, although the referenced portions of the Specification indicate “examples” in which the “roll call query” is “an optional service provided by an ‘event node server’” (id.), nothing in the Specification limits “roll call query” to “an optional service provided by the ‘event node server,’” as Patent Owner contends. Id. Any special definition for a claim term must be set forth in the Specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “roll call query” as claimed is not limited to an optional service provided by any event node server. We determine no further explicit construction is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unpatentable over Gage and Mitchell. Pet. 44–49. In particular, Petitioner contends that a POSITA reading Gage, “would have understood that there could be many reasons for a subscriber to fail to respond to the disaster response system queries” (id. at 44), and “would have sought out references similar to Gage that additionally teach techniques for enabling other users or subscribers to provide status updates for non-responsive subscribers” (id. at 45). According to Petitioner, “Mitchell discloses a similar system as Gage,” wherein “an ‘intelligent headcount system’ . . . ‘ensur[es] that all persons have been accounted for . . . in real time in response to an emergency or disaster declaration” (Pet. 45 (citing Ex. 1013 ¶ 11)), wherein the POSITA “would have been motivated to modify Gage to enable accounted for (responsive) subscribers to provide information relating to the status of unaccounted for (nonresponsive) subscribers, as taught by Mitchell.” Id. at 46 (citing Ex. 1003 ¶¶ 142–144). At this stage in the proceeding, Patent Owner merely asserts that “[f]or the reasons detailed supra, Gage fails to disclose all the elements of independent claims 1, 8, and 13 upon which claims 2, 9, and 14, respectively depend,” wherein “[t]he Petition fails to assert Mitchell . . . overcomes the deficiencies.” Prelim. Resp. 23. As discussed supra Section II(D)(3)(a), we find unavailing Patent Owner’s contention that Gage fails to disclose all the elements of independent claims 1, 8, and 13. Having reviewed Petitioner’s arguments and supporting evidence in the present record, we determine that Petitioner has made a sufficient showing that Gage in further view of Mitchell teaches the limitations recited in claims 2, 9, and 14. Furthermore, based on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Gage and Mitchell.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,877,345
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.