- Platinum Optics Technology, Inc. v. Viavi Solutions Inc.All claims unpatentablePTAB · Apr 11, 2024 · IPR2022-01489 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: Hendrix anticipates them, and the listed combinations also render their respective claims obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In the Decision on Institution, we adopted a slightly modified version of this definition in which we removed the open-ended term “at least.” Inst. Dec. 10–11. Patent Owner does not address the definition of a POSA. See generally PO Resp. Patent Owner’s declarant Dr. Clemens applies Petitioner’s definition, but does not opine on whether it is correct. Ex. 2001 ¶¶ 22–23. As in the Decision on Institution (Inst. Dec. 10), we apply the same slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“filter comprises “a third set of layers on the second side, whether the third set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner agrees that this is the “literal” reading of the language, but contends that one of ordinary skill in the art “would have appreciated that this language was intended to read ‘wherein’ rather than ‘whether’” and that the claim requires that this set of layers must include oxygen. PO Resp. 24–26 (citing Ex. 2001 ¶¶ 53–55). We agree with Petitioner’s representation that each of the challenges presented either anticipates or renders obvious a third set of layers with oxygen on a second side of a substrate (Pet. 8) and therefore, no claim construction is necessary for this term. 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“415 F.3d at 1314): “a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen” (claim 1) and “a first set of layers including silicon and hydrogen” (claims 9 and 15). Ex. 1001, 10:41–49, 10:65–11:4, 11:17–12:5. As the parties agree, these recitations are broadly worded. See Pet. 14 (describing the recitations of the claims as “broad” and directed to “layers of any material that has both ‘silicon and hydrogen’”); PO Resp. 42 (describing the claims as “simply specifying physical layers including silicon and hydrogen in them”), 44 (describing the disputed terms as “open-ended claiming of layers including hydrogen and silicon”). Despite this broad language, Patent Owner contends that we must read “layers including silicon and hydrogen” in conjunction with other limitations in the claims reciting a “near infrared bandpass filter.” PO Resp. 35–37 (citing Ex. 2001 ¶¶ 65–66). For purposes of our analysis, we limit “layers including silicon and hydrogen” to only materials suitable for NIR bandpass filters, as suggested by Patent Owner. We next examine the rest of the intrinsic evidence. The specification of the ’794 patent does not contain language that generally describes “layers including silicon and hydrogen.” Instead, the specification describes only layers of hydrogenated silicon: its abstract is directed to an “optical filter” that “includes a filter stack formed of hydrogenated silicon layers” (Ex. 1001, code (57)); the technical field of the invention is described as “relat[ing] to optical filters including hydrogenated silicon layers and to sensor systems comprising such optical filters” (id. at 1:20–23); the summary of the invention describes “the present invention” as an optical filter or sensor system “comprising” “a plurality of hydrogenated silicon layers” (id. at 2:57–3:19); and the detailed description begins with a hydrogenated silicon (Si:H) layers” (id. at 4:19–20). The specification only mentions silicon and hydrogen separately with respect to the disclosed sputter-deposition system “used to produce the hydrogenated silicon material.” Id. at 4:35–5:61, 7:10–19. In particular, the specification describes how “cathode 430 includes a silicon target 431, which is sputtered in the presence of hydrogen (H2), as well as an inert gas such as argon, to deposit the hydrogenated silicon material as a layer on the substrate 420.” Id. at 4:44–47. The specification also describes how altering the hydrogen flow rate in the deposition process affects the optical properties of hydrogenated silicon produced by the deposition system. See id. at 5:1–61. But the only end product described from the sputter-deposition process using silicon and hydrogen is hydrogenated silicon. See id. at 4:35–5:61, 7:10–19. As such, the specification does not provide any indication of materials beyond hydrogenated silicon that are within the scope of “layers including silicon and hydrogen.”” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“hydrogen” defines a genus. The test for providing a written description that supports a genus claim is whether the description provides “either a representative number of species falling within the scope of the genus or in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). “Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared.” Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358 (Fed. Cir. 2023). Yet the patentees only disclosed hydrogenated silicon as a possible species. Indeed, the specification focuses on a singular example of a sputterdeposition system that is used to produce an improved hydrogenated silicon material. See Ex. 1017 ¶¶ 36–38. Patent Owner cites this deposition process as written description support for “the claimed layers containing silicon and hydrogen.” See PO Resp. 44. But this example supports only how to make hydrogenated silicon and does not include any indication about what other materials would be within the scope of the claimed genus. Under these circumstances, the specification’s disclosure of a single species is not an adequate number to show possession of the entire genus of “layers including silicon and hydrogen.” Beyond the disclosure of the sputter-deposition process for producing hydrogenated silicon, Patent Owner does not identify—and we cannot discern—any other examples of a “structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350. This is particularly noteworthy given that undisputed record evidence shows numerous other potential filter materials “including silicon and hydrogen.” See supra § II.D.1.a. In the absence of structural description supporting “layers including silicon and hydrogen,” we determine that an” slip op. at 19
Patent outcomesUS 11,131,794 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,131,794 - PTAB · Mar 13, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–20 on all Petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–20 of the ’343 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Keysight IPR. See IPR2023- 00446, Paper 9.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8.” slip op. at 4
NonePatents in suitUS 10,567,343 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01377 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–8, 10–12, and 14–22 are unpatentable: claims 1–8, 12, and 14–22 as anticipated by Garber; claims 10 and 11 as obvious over Garber and Andersen.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation of Claim 1 a. A portable interrogator, comprising: Petitioner contends that the preamble is not limiting, but, to the extent that it is, Garber discloses a portable interrogator. Pet. 12–13 (citing, inter alia, Ex. 1005, 14:59–62, 15:63–65). Petitioner asserts that Garber discloses a portable interrogator in the form of a hand-held RFID device, and points to, inter alia, Garber’s description of Figure 4 as depicting “a block diagram of an RFID interrogation system interacting with an RFID tag.” Id. at 12 (quoting Ex. 1005, 3:46–47) (emphasis omitted). Patent Owner does not raise any arguments regarding this contention. b. an antenna configured to receive a first signal from a first object; Petitioner contends that Garber discloses a hand-held RFID device having an antenna for the RFID reader. Pet. 13–14 (citing Ex. 1005, 15:43– 46, 16:11–13, Fig. 13; Ex. 1002 ¶¶ 75–78). Petitioner further contends that Garber’s Figure 13 depicts the antenna receiving an RFID signal from a tag attached to a library book. Id. at 13. Petitioner additionally contends that Garber discloses the identification, by the RFID device, of multiple items via code signals 202, thus disclosing an antenna configured to receive a first signal from a first object. Id. at 14. Petitioner notes that Garber states, “[t]he hand-held RFID device . . . is capable of identifying multiple items that are within the range of the device.” Id. (quoting Ex. 1005, 14:40–45) (emphasis and alterations in original). Petitioner further asserts that “Garber also teaches that ‘if items used in the library are first placed on a book cart [in close proximity without obstructions], for example, the hand-held device could make a single pass by the items on the cart to record them.’” Id. (quoting Ex. 1005, 18:25–27) (emphasis and alterations in original). Patent Owner does not raise any arguments regarding these contentions. c. a control and processing subsystem configured to discern a presence of said first object from said first signal; and Petitioner contends that: Garber discloses a control and processing subsystem (e.g., the processor in the hand-held RFID device/computer 108) configured to discern a presence of (e.g., decoding response from tags to identify tagged item) said first object (e.g., the RFID tags) from said first signal (e.g., signals produced by tags/response code signal 202). Pet. 17 (citing Ex. 1002 ¶¶ 79–84); see also id. at 14–17. Patent Owner does not raise any arguments regarding this contention.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 49, 52 (citing Ex. 1002 ¶¶ 187–196). First, Petitioner argues that Garber and Andersen are analogous art to the ’293 patent “because they are in the same field of endeavor—namely, interrogation systems.” Id. at 49. Specifically, Petitioner argues that Garber and Andersen are analogous to the ’293 patent “because they are reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. Petitioner contends that “[t]he ’293 Patent identifies deficiencies in the prior art as including [inter alia] a requirement ‘that each device be interrogated separately’ (versus ‘[t]he ability to interrogate a plurality of closely spaced tags simultaneously’).” Id. at 49–50 (citing Ex. 1001, 4:16–25, 5:56–6:15, 6:40–46) (third alteration in original). According to Petitioner, Garber discloses, among other things, that “‘[a]nother benefit’ of the RFID device as ‘the ability to process multiple items at one time’ where ‘conventional devices having only optical bar code scanners can process only a single item . . . at one time.’” Id. at 50 (citing Ex. 1005, 13:25–30, 13:30–36 (“greatly reduc[ing] the time required for library staff to process multiple items.”)) (alterations in original). Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 50–51 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. at 51 (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 51 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman Filter with Garber’s hand-held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. at 51–52. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. at 52. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 29–32; PO Sur-reply 23. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 31. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’293 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’293 Patent involve multiple signals and not the single signal problem addressed by Andersen.” Id.” slip op. at 68
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“5. Objective Indicia of Non-Obviousness Patent Owner asserts that there is evidence of long felt but unresolved need that constitutes objective indicia of nonobviousness. PO Resp. 32–33; see PO Sur-reply 24 (“others in the field had attempted and failed to solve the problems addressed by the ‘293 Patent”). Patent Owner also makes certain assertions regarding the adoption and possible acquisition of its technology. PO Resp. 34; see also PO Sur-reply 24 (referring to “industry acceptance of Lone Star’s inventions”). Petitioner characterizes these latter assertions as allegations of industry praise and commercial success. Pet. Reply 24. In support of its objective indicia arguments, Patent Owner relies solely on the declaration of named-inventor John Volpi (Ex. 2018). See PO Resp. 32. Petitioner argues that there is no nexus to the claimed invention because Patent Owner “has not identified the merits of the claimed invention or any product that embodies the claimed features or is coextensive with them.” Pet. Reply 23–24. Petitioner also argues that Patent Owner “has not established industry praise or commercial success, let alone a nexus to the merits of the claimed invention.” Id. at 24. As the Federal Circuit has explained: For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). . . . However, even absent a presumption of nexus, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).” slip op. at 72
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“exhibits for use at oral argument. Paper 31 (Petitioner’s objections); Paper 33 (Patent Owner’s objections). Petitioner contends that certain of Patent Owner’s demonstrative exhibit slides contain new argument not previously made in any paper and evidence not previously asserted or relied on in any paper. See Paper 31. Patent Owner similarly contends that certain of Petitioner’s demonstrative exhibit slides contain new argument and evidence not previously referenced or relied on. See Paper 33. The parties’ demonstrative exhibits are not evidence and we do not rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 79
Patent outcomesUS 10,482,293 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01376 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–4 and 6–20 are unpatentable: the Board found the asserted Garber-based anticipation and obviousness grounds established, while not reaching three alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Examiner’s prior art references, in order to read an RFID tag, required each tag to be isolated from others, either by distance or through the use of a strategically placed RF shield. The applicant distinguished the claimed subject matter over those relatively unsophisticated RFID readers (that could only read one tag at a time) by amending the claims to recite, by the inclusion of “close proximity” and “unshielded,” a more sophisticated interrogator that did not need to use spacing or shielding. This is consistent with the background section of the ’717 patent stating that RFID systems at the time of the patent were better than relatively unsophisticated bar code systems. See Ex. 1001, 4:6–22; see also PO Resp. 17–18 (Patent Owner quoting the same after re-stating the Board’s preliminary construction and conceding that “[t]he Board conclusion here is supported by the plain language of the ‘717 Patent.”). Specifically, the ’717 patent explains that “[a]n important attribute of RFID interrogation systems is that a number of tags can be interrogated simultaneously stemming from the signal processing,” and that “[a] related and desirable attribute is that there is not typically a minimum separation required between the tags.” Ex. 1001, 4:6– 12. “Most other identification systems, such as systems employing bar codes, usually impose that each device be interrogated separately.” Id. at 4:17–19.” slip op. at 23
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“means-plus-function limitation governed by 35 U.S.C. §112 ¶ 6 and, accordingly, is limited to corresponding structure (and equivalents) disclosed” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation and Obviousness of Claim 1” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of” slip op. at 84
Patent outcomesUS 9,996,717 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,996,717 - Zebra Technologies Corp. v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01375 · APJ Russell E Cass · IPR · Final written decision
The Board held claims 1–4, 6–7, 10–19, 21, and 22 unpatentable, finding the asserted Garber grounds proven and not reaching the alternative grounds.
RulingsFinal written decision- Expert testimonyOther
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Analysis of Independent Claim 1 a) 1[pre]: “[an] interrogator, comprising:” Petitioner argues that, to the extent the preamble is limiting, Garber discloses it. Pet. 16. Petitioner points to Garber’s disclosure that “[a] handheld RFID device can interrogate and identify RFID-tagged items,” and that the hand-held RFID device “preferably includes an RFID reader and writer.” Id. (citing Ex. 1005, 14:49–62, 15:63–65) (emphasis omitted). “Furthermore,” Petitioner contends, “Figure 4 of Garber discloses ‘a block diagram of an RFID interrogation system interacting with an RFID tag,’” and RFID tags “respond to requests for information by the interrogator.” Id. (citing Ex. 1005, 3:46–47, 5:44–45). Patent Owner does not present arguments specifically directed to the preamble of claim 1. See PO Resp. Based on the full trial record, we find that Petitioner’s cited evidence sufficiently supports its contentions regarding the preamble.8” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- ExcludeDenied
“rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 88
Patent outcomesUS 9,646,182 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,646,182 - PTAB · Feb 22, 2024 · IPR2023-01329 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–27 on all petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR, with no new grounds added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW We instituted inter partes review in the Keysight IPR on all challenged claims and all asserted grounds of unpatentability. IPR2023- 00445, Paper 10. Petitioner’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Keysight IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“[the instant Petition] is substantively identical to Keysight’s IPR.”). As noted above, Patent Owner does not refute the same. Paper 5, 1. Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–27 of the ’266 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8. According to Petitioner, its “Petition presents the unpatentability of the same claims of the same patent on the same grounds as the Keysight Petition.” Id. at 5. Petitioner also argues that “Patent Owner will not be required to provide any additional analysis or arguments beyond what it will already provide in responding to the Keysight Petition,” and does not unduly burden or negatively impact the trial schedule. Id. at 6–7. Further, Petitioner agrees to take an “understudy” role and Petitioner “will assume the primary role only if Keysight ceases to participate in the Keysight IPR.” Id. at 7–8. Thus, according to Petitioner, Patent Owner would not suffer prejudice if the two proceedings are joined. Id. at 8. Patent Owner has not disputed the above contentions by Petitioner and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Petitioner has shown that joinder to the Keysight IPR is appropriate in this case. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 4
NonePatents in suitUS 10,785,266 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01374 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 3–10, 15, 16, and 18 are unpatentable as obvious under § 103 over Garber and Werb, with Andersen added for claims 6, 7, and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field” and “significant experience with detection devices, like RFID and metal detectors.” Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner does not address Petitioner’s proposal or offer a different definition, and we determine that Petitioner’s formulation is consistent with the qualifications a person would have needed to understand and implement the teachings of the ’711 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may reflect an appropriate level of skill in the art). We thus apply Petitioner’s description of the person of ordinary skill in the art. B.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 2 The District Court similarly concluded that “sensing subsystem” “is not a means- plus-function term subject to § 112 ¶ 6.” See Ex. 1015, 4. 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome . . . if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). We conclude that Petitioner has not overcome the presumption against applying § 112, ¶ 6. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’” (Pet. 6)—are conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Accordingly, we maintain our determination that § 112 ¶ 6 does not apply to “a sensing subsystem configured to provide a signal having a signature representing a presence of a radio frequency identification (RFID) object.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededMixed
“We do not adopt either of the proposed constructions because we conclude they add features from embodiments but fail to identify the required “clear indication in the intrinsic record that the patentee intended” to limit the claims in the manner proposed. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Instead, we conclude that “sensing subsystem” is “a component configured to detect a signal representing an object,” as proposed by Petitioner, but without “self-contained.” This is functionally the same as Patent Owner’s proposed construction with the conversion concept omitted, and also consistent with the District Court’s construction, which was “components configured to detect and convert a signal representing an object.” See Ex. 1015, 4.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Petitioner’s argument that “multiscan, coherent signal processing” does not require multiple scans. As noted above, Petitioner and Dr. Sharony acknowledge that “multiscan, coherent signal processing” is not a term of art and should be given its plain and ordinary meaning, and we find that the plain and ordinary meaning of “multiscan” requires multiple scans because the term is a combination of the prefix “multi,” which means more than one, with “scan.” Interpreting “multiscan” to cover only a single scan would read the prefix “multi” out of the claim term. Similarly, construing “multiscan” to require multiple signals, but not multiple scans, would read “scan” out of the term. Our understanding is consistent with the ’711 patent, which states as follows: The integrated mode of operation may employ multiscan, coherent signal processing of diverse multiple inputs to achieve significantly higher detection sensitivities thereby allowing more precise object location and identification. Ex. 1001, 18:18–22 (emphasis added). This sentence indicates that “multiscan, coherent signal processing” processes “diverse multiple inputs” to achieve higher 4 Here and elsewhere we substitute italics for bold emphasis used by the parties. detection sensitivities. However, it does not redefine the ordinary meaning of the term “multiscan” so that it would cover scanning only once rather than scanning multiple times, or cover receiving multiple inputs but not multiple scans.” slip op. at 14
Patent outcomesUS 7,557,711 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,557,711 - PTAB · Feb 16, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–19 and 37–58 based on the asserted grounds and granted Porsche’s motion to join IPR2023-00335, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the evidence and arguments “are substantively identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4. Additionally, Petitioner represents that it is willing to accept a limited, “understudy role” to Volkswagen (the original petitioner in the VW IPR), taking over only in the event VW no longer participates. See id. at 5; id. at 5 n.3. Specifically, Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) Petitioner will not make any substantive filings and shall be bound by the filings of VW, unless a filing concerns termination and settlement, or issues solely involving Petitioner; (b) Petitioner will not present any argument or make any presentation at the oral hearing unless an issue solely involves Petitioner, or when addressing motions that do not affect VW; (c) Petitioner will not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by VW alone and with VW’s agreement; (d) Petitioner will not seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner; and (e) Petitioner will not rely on expert testimony beyond that submitted by VW unless and until VW is terminated as party to the proceeding prior to any necessary depositions. See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion. Thus, Petitioner’s Motion stands unopposed. Under these circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is” slip op. at 8
- PTAB / AIA Trials › Discretionary denialNot reached
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503 - PTAB · Feb 16, 2024 · IPR2023-01320 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 26–36 and 65–70 on the petition’s grounds and granted Porsche’s motion to join IPR2023-00328, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4.” slip op. at 8
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 63–71) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Jan 29, 2024 · IPR2024-00035 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–30, finding a reasonable likelihood that claims 1–30 are unpatentable under § 103, and granted AO Kaspersky Lab’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“which provides that an inter partes review may not be instituted unless 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.” For the reasons described below, we institute inter partes review of all the challenged claims, and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the” slip op. at 3
NonePatents in suitUS 8,726,389
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.