- PTAB · Feb 13, 2024 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–7, 13–15, 17, and 18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
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) (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 ’494 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) (“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
“A. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art of the ’494 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science, or similar disciplines, along with two years of professional experience working with the research, design and/or development of semiconductors, processors, power consumption and thermal power management, and related firmware and software or an equivalent level of skill, knowledge, and experience.” Pet. 12–13 (citing Wyatt Decl. ¶ 21). Petitioner adds, “[t]he more education one has, the less experience needed to attain an ordinary level of skill. Similarly, more experience in the field may serve as a substitute for formal education.” Id. at 13 (citations omitted) At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states, “[u]nless indicated otherwise, all claim terms herein are given [their] ordinary and customary meaning.” Pet. 12. Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 13
Claim constructioncites KSRPatents in suitUS 8,898,494 - PTAB · Feb 13, 2024 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted obviousness grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response. Paper 9. 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) (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 ’080 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Other 314aNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted, Patent Owner has expressly waived filing a preliminary response. Paper 9. At this stage, therefore, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. 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§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - PTAB · Jan 11, 2024 · IPR2023-01090 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted review of claims 8, 13, and 15–18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial. Specifically, we determine that Petitioner’s stipulation, reasonable diligence in filing the Petition, and the limited extent of the parties’ and district court’s investment in the district court litigation outweigh the projected trial date. See Guidance Memo 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, Paper 23 at 4–5. 7. Conclusion on Discretionary Denial Under § 314(a) We have considered the circumstances and facts before us in view of the Fintiv factors. Our analysis is fact driven and no single factor is determinative under § 314(a). Based on the circumstances presented, we determine that, as a whole, the factors weigh against exercising discretion to deny institution of the Petition.” slip op. at 24
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide provides that “multiple petitions by a petitioner are not necessary in the vast majority of cases” but acknowledges that “there may be circumstances in which more than one petition is necessary.” CTPG 59–60. In light of the circumstances presented here, we find persuasive Petitioner’s reasons for filing two parallel petitions, particularly because the petitions challenge different claims of the ’349 patent. In effect, the two petitions were filed instead of one merely because our Rules have page limit restrictions. 37 C.F.R. § 42.24(a)(1)(i) (setting a limit of 14,000 words); see also Federal Register, Vol. 77, No. 157, at 48635 (Aug. 14, 2012) (the USPTO suggesting in response to comment 91 that “the filing of multiple petitions directed to subsets of related claims should be considered” when the proceeding is complex). Under these circumstances, conducting two related inter partes reviews will not stress the Board’s finite resources or unduly burden the Board or Patent Owner. 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.” slip op. at 26
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not challenge Petitioner’s definition. Prelim. Resp. 12. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 13
Discretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - PTAB · Jan 11, 2024 · IPR2023-01089 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted review of claims 1, 4, 5, 7, 10–12, and 26 on all asserted grounds, finding a reasonable likelihood of unpatentability over Fells under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Biosystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“proceeding is in January 2025, one year after we issue this decision instituting an inter partes review. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R. § 42.100(c). We “generally take courts’ trial schedules at face value absent some strong evidence to the contrary.” See Fintiv II, Paper 15 at 13. However, the Director has cautioned the Board that “scheduled trial dates are unreliable and often change.” Guidance Memo 8. Therefore, the Director instructed the Board to consider additional supporting factors regarding trial dates, such as median time-to-trial statistics. Id. at 8–9. If the underlying litigation begins trial after the median amount of time to trial, it would occur in approximately May 2024. Therefore, because the trial in the district court litigation is scheduled to begin five months before our deadline to reach a final written decision, and considering the median time-to-trial statistics, this factor weighs in favor of discretionary denial. Fintiv, Paper 11 at 9. However, the Director cautions that “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.” Id. at 8. Accordingly, in accordance with the Director’s Memo, we must consider the remaining factors below.” slip op. at 17
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide provides that “multiple petitions by a petitioner are not necessary in the vast majority of cases” but acknowledges that “there may be circumstances in which more than one petition is necessary.” CTPG 59–60. In light of the circumstances presented here, we find persuasive Petitioner’s reasons for filing two parallel petitions, particularly because the petitions challenge different claims of the ’349 patent. In effect, the two petitions were filed instead of one merely because our Rules have page limit restrictions. 37 C.F.R. § 42.24(a)(1)(i) (setting a limit of 14,000 words); see also Federal Register, Vol. 77, No. 157, at 48635 (Aug. 14, 2012) (the USPTO suggesting in response to comment 91 that “the filing of multiple petitions directed to subsets of related claims should be considered” when the proceeding is complex). Under these circumstances, conducting two related inter partes reviews will not stress the Board’s finite resources or unduly burden the Board or Patent Owner. 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.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not challenge Petitioner’s definition. Prelim. Resp. 13. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218 - PTAB · Oct 26, 2023 · IPR2023-00789 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8, and 9 on all three § 103 grounds because Petitioner showed a reasonable likelihood of prevailing 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 must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’245 patent. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[a]s of May 19, 2009, a person of ordinary skill in the art (“POSITA”) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or an M.S.E.E. and 1-2 years of professional experience in the field of integrated circuit design; or a Ph.D. in electrical engineering.” Pet. 25–26 (citing Ex. 1003 ¶ 4). Although phrased slightly differently, Patent Owner provides essentially the same definition of a POSITA. In particular, Patent Owner asserts that “[a] person of ordinary skill in the art of this technology at the time of the invention would have had at least a bachelor’s degree in electrical engineering or an equivalent field and at least 3‒4 years of professional experience in the field of integrated circuit design.” Prelim. Resp. 14. Patent Owner further argues that “[s]omeone with additional education but less professional experience may qualify as a POSITA, such as someone with a master’s degree in electrical engineering and 1‒2 years of professional experience in the field of integrated circuit design or someone with a Ph.D. in electrical engineering.” Id. regarding the level of one of ordinary skill in the art. We also note that this definition of a POSITA appears to be consistent with the level of ordinary skill in the art that is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Based on the present record, we agree with Patent Owner that the term “spiral inductor” recited in the preamble is limiting. Without the preamble, the body of claim 1 does not recite a structurally complete invention. The body of claim 1 recites a number of “metal layers” having a collection of “segments,” number of via sets, and limitations requiring certain segments and vias to construct a number of shunt windings and a crossover region. Without the preamble, it is unclear from just the recitations in the body of claim 1 what field of art the claim relates to. The preamble is therefore necessary to provide context as to which field of art the recited limitations pertain so as to understand limitations in the claim body. As such, the term “spiral inductor” recited in the preamble is necessary to give life, meaning, and vitality to the claim. dependent claim 8, thus further indicating that the preamble of claim 1 is a necessary component of the claimed invention. See Pitney Bowes, F.3d at 1305 (stating that a preamble claim should be construed as limiting the scope of the claim “[i]f the claim preamble, when read in the context of the entire claim, recites limitations of the claim”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“a preamble phrase that provides antecedent basis for a claim limitation generally limits the scope of the claim”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“segment and the first set of vias construct a first shunt winding; the second segment, the fifth segment and the second set of vias construct a second shunt winding.” Ex. 1001, 9:59–62 (emphasis added). Petitioner argues that one of ordinary skill in the art would have understood that “shunt windings,” as claim 1 recites, means “windings in parallel.” Pet. 27. Petitioner contends that the ’245 patent describes a first segment, a fourth segment, and a first set of vias as constructing a first shunt winding and a second segment, fifth segment, and a second set of vias as constructing a second shunt winding, which are depicted in the drawings. Id. at 27–28 (citing Ex. 1001, 1:64–67, 4:22–24, 6:27–28, Figs. 2, 6B). According to Petitioner, “[t]he 245 patent distinguishes a ‘shunt winding’ from a ‘serial winding’” because the ’245 patent states “symmetric spiral inductor 500 is a multi-layer stacked spiral inductor combining the first inductor 510 (i.e., the serial winding) with the second inductor 610 (i.e., the shunt winding). . .” Id. at 28–29 (citing Ex. 1001, 6:14–17, Figs. 6A, 6B). Petitioner asserts that “[t]his distinction is consistent with how a common understanding of ‘shunt’ is to place components in parallel.” Id. at 29 (citing Ex. 1020; Ex. 1021; Ex. 1003 ¶¶ 89, 113–116). Petitioner further argues that “patents and technical articles confirm this understanding.” Id. at 29–30 (citing Ex. 1018 ¶ 6, 22, 23; Ex. 1030, 1, 7, 9). Petitioner also contends that this is consistent with how Patent Owner interprets the claim language due to the interchangeable use of “shunt winding” and “parallel winding” in the Taiwanese priority application. Id. at 30 (citing Ex. 1023, 9, 23; Ex. 1003 ¶¶ 117–120). Patent Owner does not dispute Petitioner’s claim construction. At this stage of the proceeding, we agree with Petitioner’s undisputed contentions and construe “shunt windings” to mean windings in parallel.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,245 - PTAB · Oct 26, 2023 · IPR2023-00788 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 9 on both asserted obviousness grounds, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’582 patent. Thus, we institute an inter partes review of all challenged claims of the ’582 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[b]y April 16, 2014, a person of ordinary skill in the art (‘POSITA’) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or a M.S.E.E. and 1-2 years of professional experience in the field of IC design; or a Ph.D. in electrical engineering.” Pet. 31 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. We also note that this level of ordinary skill in the art appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret 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).” 37 C.F.R. § 42.100(b). Under this standard, we construe 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.” Id. meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and “after reading the entire patent” and its prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then 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). Petitioner states that it applies “herein the understanding of the claims set forth in Realtek’s infringement chart in the ITC Investigation.” Pet. 34 (citing Ex. 1034). Petitioner otherwise does not assert any explicit claim construction but states that it reserves “the right to challenge Realtek’s proposed constructions in litigation.” Id. Patent Owner does not provide any express claim construction for the challenged claims. See generally Prelim. Resp. We determine no express claim construction is required at this stage of the proceeding.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Muh and Niknejad. Pet. 79–110. We have reviewed Petitioner’s argument and evidence, which we discuss below, and are persuaded that Petitioner has sufficiently shown that each of the limitations of claim 1 are taught or suggested by the combination of Muh and Niknejad, and that Petitioner has articulated a reasonable rationale for combining the references to arrive at claim 1, notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,590,582 - PTAB · Oct 18, 2023 · IPR2023-00703 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all grounds, finding a reasonable likelihood that claim 1 was obvious over Pham and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“on the related district court matters identified above. Prelim. Resp. 1–12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the co-pending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Paper 7, Appendix A at 2), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Reviewing Petitioner’s analysis of claim 1, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. The three remaining grounds are also based on the same or similar combination of Pham and Wu, and add one or more references to address features in dependent claims. As” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Lastly, Petitioner notes that Wu discloses the claimed signature database and intrusion detection system. Pet. 45–48. In particular, Petitioner notes that Wu discloses a “signature engine 34 [that] compares packets from the network traffic with such attack signatures such that policy violations can be discovered.” Id. at 47 (quoting Ex. 1005, 5:23–29). Petitioner asserts that it would have been obvious to add the intrusion detection system discussed in Wu to Pham’s network security system between the cryptographic core and the packet engine in order to gain the benefits of that intrusion detection system. Id. at 25–31. Petitioner explains that devices such as that disclosed in Wu should be placed where it can inspect unencrypted traffic in the first possible moment, which in the case of Pham would be adjacent the encryption/decryption engine 120 (i.e., between the cryptographic core and the packet engine, as claimed). Id. at 29–31. Reviewing Petitioner’s analysis of claim 1, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. The three remaining grounds are also based on the same or similar combination of Pham and Wu, and add one or more references to address features in dependent claims. As” slip op. at 11
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · Oct 18, 2023 · IPR2023-00673 · APJ William V Saindon · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Prelim. Resp. 1– 12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the co-pending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Paper 8, Appendix A at 2), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Reviewing Petitioner’s analysis of claim 1, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. The three remaining grounds are also based on a similar combination of Pham and Wu, and add one or more references to address features in dependent claims. As mentioned above, Patent Owner has not argued the merits of the case at this time. IV. CONCLUSION For the reasons given above, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. Accordingly, we institute inter partes review on all challenged claims and grounds. 37 C.F.R. § 42.108(a) (“When instituting . . . 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 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a Bachelor’s degree in computer science, computer engineering, or a related discipline, and 3–4 years of experience in computer networking with an emphasis on packet processing systems including traffic monitoring, inspection, and encryption/decryption systems. More experience could compensate for less formal education and vice versa. Pet. 14–15. Patent Owner did not offer a level of ordinary skill in the art in its preliminary response. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the level of disclosure provided in the ’436 patent and the prior art cited.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party offers any claim constructions, nor do we see a need to construe any terms in order to make 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)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - PTAB · Oct 11, 2023 · IPR2023-00617 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 3, 12, 14, and 15 on all asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons given, Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claims 1 and 12.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 9 (citing Mudge Decl. ¶ 87). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Mudge explains that “[a person of ordinary skill] would have understood that, while Figure 1 does not depict lines connecting interconnect 108 to core 112-1 and to L2/L3 cache hierarchy, Figure 1’s arrowed lines represent the hierarchical organization of reports and commands between components, not their physical connections.” Mudge Decl. ¶ 99. Dr. Mudge’s testimony is supported by Bose’s description of Figure 1 as showing “a hierarchical power-performance monitor.” Ex. 1005, 3:59–61. Elsewhere, Bose refers to this figure as showing a “management hierarchy” (id. at 6:18) and explains that “[t]o clearly define the responsibility of each layer of the hierarchy, the layers are designed and configured such that the layers report upward and command downward in the hierarchy” (id. at 6:49–52). This disclosure in Bose supports Dr. Mudge’s conclusion that “[b]ased on Bose’s depicted and described hierarchical organization of reports and commands between components, and, based on Bose’s use of the well-known term of art ‘interconnect,’ it would have been obvious to a [person of ordinary skill] that Bose’s interconnect 108 couples and connects to each core and to L2/L3 cache hierarchy.” Mudge Decl. ¶ 99. We find that on this record Petitioner has demonstrated sufficiently at this stage that this element is met by Bose.” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,898,494
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.