- Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Sep 6, 2022 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Final written decision
Claims 11, 12, 14, 22, and 24 were not shown unpatentable under § 103 over Khandekar, Le, and Matthews because the petition did not establish a required image-instance limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“in this case (see Dec. 10–11) or in the Institution Decision or Final Written Decision in related IPR2020-01582 (see IPR2020-01582, Paper 9 at 9–10 (PTAB Mar. 15, 2021); ’1582 Final Written Decision at 10–12). Consistent with the ’1582 Final Written Decision, we agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the limitation is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 15; PO Resp. 31–32. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claim 19. Ex. 1001, 36:35–37, 36:50–52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the limitation. We again need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire limitation, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 13
- Skill levelSkill level board ownOther
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 18
- Strike new argumentNew argument disregardedDecided for patent owner
“new theory distinct from the first and second theories offered in the Petition. Although the Petition included a citation to Khandekar’s disclosure of applications installed and loaded for running on the VM (see Pet. 41 (citing Ex. 1004, 6:42–56; Ex. 1003 ¶ 137)), the arguments presented in the Petition do not explain Petitioner’s third theory, elucidated for the first time in the Reply. It is improper for Petitioner on Reply to point to vague, isolated arguments and citations to the prior art from the Petition and advance a new theory that was not explicitly offered or explained in the Petition. Permitting a petitioner to advance a new theory on reply in this manner would put the burden on a patent owner to deduce and respond to all possible theories that could have been, but were not, explicitly raised in a petition. But this would be an unfair burden to place on a patent owner—and one that governing law and Board regulations and guidelines make clear the patent owner does not bear. See, e.g., 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)‒(5); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 73–75. Rather, it is a petitioner’s burden to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). As the Federal Circuit has explained,” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner makes an inadequate showing for this limitation. Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s disclosures of virtual disk image files for pre-built, custom-built, and instantly deployable VMs teach or suggest “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines.” In particular, giving the words of the entire limitation their ordinary and customary meaning, Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s VM images or virtual disk image files for pre-built, custom-built, and instantly deployable VMs are “executable on the plurality of virtual machines” (i.e., capable of execution on the plurality of virtual machines). At best, Petitioner cites Khandekar’s teachings that it is the operating system and applications of Khandekar’s virtual disk image files—not Khandekar’s virtual disk image files themselves—that are executable on the virtual machines. See Pet. 41 (citing Ex. 1004, 6:42–56 (disclosing applications installed and loaded for running on the VM); Ex. 1003 ¶ 137). But this is inconsistent with Petitioner’s position that it is Khandekar’s virtual disk image files themselves that teach “a plurality of image instances of a plurality of software applications.” See id. at 36–37; see also Pet. Reply 12 (confirming Petitioner’s position (citing Pet. 36–41)). For the foregoing reasons, Petitioner does not demonstrate that Khandekar teaches, suggests, or renders obvious “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” as recited in claim 1, under Petitioner’s first theory.” slip op. at 30
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Mar 11, 2022 · IPR2020-01582 · APJ Kristen L Droesch · IPR · Final written decision
The Board held claims 1–5, 9, 10, 17, 19–21, and 26 not unpatentable because the prior-art combinations did not teach the claimed application image instances executable on the virtual machines.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Decision. See Dec. 9. We agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the claim phrase is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 13; PO Resp. 43–44. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claims 19 and 26. Ex. 1001, 36:35–37, 36:50– 52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the claim phrase. As in the Institution Decision, we need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire claim phrase, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 11
- Prior constructionNot reached
“Pet. 13; PO Resp. 8–42; Pet. Reply 5–17; PO Sur-Reply 5–17. Nonetheless, we note that both parties apply the construction of “image instance” to which they agreed in the related district court proceeding—specifically, “a snapshot, or copy, of installed and configured software.” Ex. 2003 (Joint Claim Construction and Prehearing Statement in the related district court proceeding), 1–2 (identifying this construction of “image instance” as a stipulated claim construction); PO Resp. 52–53 (citing Ex. 2001 ¶ 134; Ex. 2003, 2) (arguing that Petitioner “admits” to this construction and applying it to dispute Petitioner’s unpatentability showing); Pet. Reply 29– 30 (citations omitted) (characterizing this as “the agreed-upon construction of image instances” and applying it within the unpatentability analysis). Because there is no dispute about the proper construction of “image instance” on the record before us, we need not construe this claim 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.’” (emphasis added) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties in Khandekar and Le. See, e.g., Pet. 6; Ex. 1003 ¶ 12; PO Resp. 48–49, 51, 57–64; Ex. 1004, 4:67–5:1; Ex. 1005, 12:38. Patent Owner also uses the acronym VMM to refer to the claimed virtual machine manager. See, e.g., PO Resp. 34. To avoid confusion, throughout the Decision, we use VMM to refer only to a virtual machine monitor and use the full term for the claimed virtual machine manager. and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner’s arguments that Khandekar’s disclosure of application installation files does not teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of “image instance.” See PO Resp. 52–53; Pet. Reply 29 (“Khandekar’s three types of VM images satisfy the agreed-upon construction of image instances: ‘a snapshot, or copy, of installed and configured software.’”). We agree with and credit Dr. Rosenblum’s persuasive testimony distinguishing Khandekar’s “executable installation file” from the recited “image instances of software applications.” See Ex. 2001 ¶ 137. Accordingly, Petitioner does not present sufficient argument or evidence to demonstrate that Khandekar’s application installation files teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of an “image instance” as “a snapshot, or copy, of installed and configured software.”” slip op. at 25
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - PTAB · Sep 7, 2021 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Institution
Instituted review of claims 11, 12, 14, 22, and 24 on the § 103 ground over Khandekar, Le, and Matthews, despite insufficient preliminary showing for claims 11 and 14.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the fact that the Petition in this proceeding is Petitioner’s second petition to challenge claims of the ’138 Patent. Paper 1; see also Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Practice Guide”),1 59–60. Petitioner asserts that this second-filed Petition challenges a new set of claims that Patent Owner asserted in the parties’ district-court litigation after Petitioner filed its petition in IPR2020-01582. Paper 1, 1–2. Petitioner contends that two petitions are necessary given the number of claims and the length of the claims challenged across the two petitions. See id. at 2; see also Consolidated Practice Guide, 59 (explaining that there may be circumstances in which more than one petition may be necessary, including when patent owner has asserted a large number of claims in litigation). Petitioner also asserts the factors relevant to multiple petitions set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.ii), favors institution on both the first-filed petition and this second-filed Petition. See id. at 4–5. Patent Owner does not address Petitioner’s arguments regarding multiple petitions (see generally Prelim. Resp.), and we agree with Petitioner that the circumstances before us warrant this second-filed Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 12, 22, and 24 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. We also determine, however, for the purpose of institution and based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing that claims 11 and 14 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. Notwithstanding the foregoing comments addressing Petitioner’s patentability challenge to claim 11 and 14, we include Petitioner’s patentability challenges to these claims within this inter partes review proceeding. In accordance with 37 C.F.R. § 42.108(a) (2021)12, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and all grounds of unpatentability asserted for each claim.”” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertions addressing the skill level of a person of ordinary skill in the art. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 13
- BurdenMixed
“On the current record, we agree with Patent Owner’s arguments. Petitioner does not adequately explain how the Khandekar-Le-Matthews combination teachings of monitoring information, updating information in a database or repository, and obtaining updated information from the repository or database teaches or suggests updating a rules engine, instead of updating the information that is input to the rules engine. At this stage of the proceeding and based on the record before us, we determine Petitioner does not show sufficiently that the subject matter of claims 11 and 14 would have been obvious over Khandekar, Le, and Matthews.” slip op. at 32
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Apple Inc. v. Uniloc 2017 LLCNo claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01993 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–5 were not shown unpatentable because the asserted combinations failed to teach the claimed now-starting predetermined time period.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In sum, the claimed predicting requires that there be an amount of time during which locations of the user device can be determined. The claim undeniably specifies the end of that time period: at the end of the “predetermined maximum amount of time.” But such ending is relative to a beginning, which has been the source of dispute in this trial. As discussed above, the plain reading of the claim urges a beginning coincident with the start of the predicting step. We have found that the specification consistently supports this reading of the claim. And we have also found that time windows disclosed in the specification that start at a specified time in the future do not pertain to the “predetermined maximum amount of time.” Rather, they further modify other unclaimed features, such as whether an action (e.g., sending a promotional code) is performed during operation hours of an establishment, or whether certain predetermined locations are relevant to the predicting step only on week days during a lunch period. Consequently, we are persuaded that the claimed “within the predetermined maximum amount of time” is not as broad as Petitioner argues—to include a future-starting window. The plain and ordinary meaning of the claim language “within” relative to the predicting step dictates otherwise, and the specification provides the context and confirms that this reading aligns with what the inventor described as the invention. For the reasons stated above, we determine that “within the predetermined maximum amount of time,” as recited in the predicting step of claim 1, means that the duration of time or time period starts when the predicting takes place.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Per our analysis of the “within” phrase, discussed above in Section III.A, the “predetermined maximum amount of time” is a period of time with a start time coincident with the predicting step. In contrast, Blegen’s specified time period is some period of time that starts in the future. We do not credit Dr. Robins’s testimony that an “afternoon” on a future date is a “predetermined maximum amount of time,” as that testimony is not based on the proper construction of the claim. Blegen’s future-starting window is not coincident with the prediction action, and no other alleged time window in Blegen has been shown to have the requisite start time. Rather, Blegen looks to future locations during a future-starting window. See Ex. 1004 ¶ 68. Consequently, we determine that Blegen does not teach the “within the predetermined maximum amount of time” limitation.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“opportunity in its Reply to brief the instant ground vis-à-vis the determination that the Petition provides insufficient explanation of the asserted combination. Reply 23−25. Petitioner again refers to Froloff’s “time radius” as a “maximum time period . . . between the present time and the estimated time of arrival,” and states that the Petition offered the operation of the modified system: “By sending the advertisement a period of time before the user is expected to arrive at a predetermined location, the advertisement’s relevance and value are enhanced.” Id. at 24 (citing Pet. 69; Robins Decl. ¶ 212). This explanation, however, is presented in the Petition under the heading “Reasons to Combine” and is substantially the same reason to combine provided for the combination of Charlebois and Gillies: “By targeting the advertisement to users who are likely to be at the predetermined location within the ‘time period’ associated with the “event,” the advertisement’s relevance and value are enhanced.” Pet. 45. Relying on this vague and conclusory rationale to combine as an explanation of how the proposed teachings are combined is insufficient. We are not persuaded that this explanation adequately provides the “operation” of the modified system. At best, the explanation informs us that sending an advertisement beforehand provides an advantage: relevance and value of the advertisement are enhanced. The explanation provides no detail of how Petitioner contends the Froloff “time radius” fits with the teachings of either Charlebois or Gillies. Further, asserting that the combination of Charlebois/Gillies/Froloff sends advertisements before the user arrives at a predetermined location does not factually distinguish this combination from the Charlebois/Gillies combination, which Petitioner asserts also performs the operation of sending beforehand advertisements to users likely to be at the sales event. In sum, Petitioner’s attempt in the Reply to explain the Petition as providing detail sufficient to show its obviousness contentions based on Froloff does not remedy the insufficiencies we noted in our Decision on Institution.” slip op. at 49
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner further urges us to consider the impact of Dr. Robins’s “unrebutted” opinion regarding the predicting step. Reply 12−13. We recognize that Petitioner filed a declaration in support of its Petition, while Patent Owner did not. However, we do not discount Patent Owner’s arguments on claim construction merely because no expert testimony supports those arguments, particularly when the arguments are based on the intrinsic record. We also do not credit expert testimony that is at odds with the claim language or the specification—as is Dr. Robins’s relevant testimony. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“A court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” (citation omitted)). For instance, Dr. Robins opines that the “predetermined maximum amount of time is ‘lunch time on weekdays’ from 11:30 am to 2:00 pm,” as disclosed in the “restaurant” example. Robins Decl. ¶ 45. Dr. Robins explains that this time window “specifies the maximum amount of time during which a lunch offer will be sent to the user device.” Id. (citing Ex. 1001, 2:17−27). But as we explained above, this time period serves to limit the applicability of the predetermined locations in the prediction, but does not refer to the “predetermined maximum amount of time.” Dr. Robins does not explain how the specification’s description of limiting applicability of the predetermined locations in any way also implicates the “predetermined maximum amount of time.” And just because Dr. Robins’s testimony in this regard is unrebutted does not mean that we should give it weight, especially when we find that it is not consistent with the ’199 patent disclosure. Accordingly, we are not persuaded by Petitioner’s arguments that we should construe the phrase as Petitioner proposes merely because its proffered expert’s testimony is unrebutted and Patent Owner has no expert.” slip op. at 18
Patent outcomesUS 9,414,199 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,414,199 - PTAB · Jan 22, 2018 · IPR2017-01047 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution because Petitioner did not show an abuse of discretion in finding the obviousness showing insufficient for claims 7, 9, 10, 13, and 19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 2–5 (§§ II, III) (Rev. 14); see id. at 2 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the [Director] the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.2, 3). In this case, the Chief Judge has considered Petitioner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,885,055 - PTAB · Jan 22, 2018 · IPR2017-01046 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner failed to show a reasonable likelihood that claims 1–6, 11, 12, and 14–17 were obvious over Inaba and Hieda.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“physical substitution or bodily incorporation of Hieda’s contacts with Inaba’s source/drain regions, as Petitioner contends in the Request. See Req. 9; cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Instead, the Decision properly determined that the Petition falls short in explaining how and why the references would have been combined to produce the claimed invention. TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). For example, the Decision states: Petitioner does not explain sufficiently how or why a POSA would have combined an optional feature of Inaba’s Figure 6 embodiment (source/drain regions formed in the top surface of the projection) with a feature of Inaba’s Figure 8 embodiment (thick insulating film 22) that prevents a channel from being formed in the top surface of the substrate projection. Nor does Petitioner explain sufficiently how or why a POSA would have formed contacts to the top surface of a projection or fence, such as contact plug 28 shown in Hieda Figures 2A and 11B, in an embodiment like Inaba’s Figure 8, which does not have a source or drain region formed in the top surface of the projection and includes thick insulating film 22 on that surface. Ex. 1005, Fig. 8. Petitioner nowhere clearly explains, nor cites evidence showing, how the combination of Inaba’s Figure 8 embodiment and Hieda’s source/drain contacts is supposed to work. For example, Petitioner does not explain how Hieda’s top surface contact plugs 28 would have provided an electrical connection to Inaba’s side surface source and drain regions 15 and 16. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have had a reasonable expectation of success in making the proposed combination.” slip op. at 6
- Other 314aDenied
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 2–5 (§§ II, III) (Rev. 14); see id. at 2 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the [Director] the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam).” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,885,055 - On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision
Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25
Patent outcomesUS 6,212,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,212,079 - Ams AG / Ams-Taos USA Inc. et al. v. 511 Innovations, Inc.Institution deniedPTAB · Mar 15, 2017 · IPR2016-01804 · APJ John A Hudalla · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 127 and 132 would have been obvious over JP ’028, Mills, or Eguchi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review as to claims 127 and 132.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We acknowledge Eguchi states that instead of blade 2, “a color stripe or color division filter may be employed.” Ex. 1006, 5:60–62. Although this statement can be taken to show that a skilled artisan would have understood how to incorporate such a filter into Eguchi’s system, it does not imply that a color stripe or color division filter simply could be swapped for blade 2 with no corresponding modifications to the remainder of Eguchi’s system. Petitioner states that implementation would be done in “the respective known manners for such filters,” but Petitioner’s analysis and Dr. Baker’s testimony are devoid of detail of how replacing blade 2 with a color stripe or color division filter would achieve spectral analysis. See Pet. 53 (citing Ex. 1009 ¶¶ 39, 68). Petitioner does not explain how such a modified system would have spectrally analyzed predetermined bands of wavelengths of light, particularly where Eguchi’s described focusing operation does not rely on color filtering of light beams A and B. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” 35 U.S.C. § 312(a)(3). Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 127 as obvious over Eguchi. Because claim 132 depends from claim 127, and because Petitioner’s arguments directed to the additional limitation of claim 132 (see Pet. 58) do not cure the deficiencies in Petitioner’s showing with respect to claim 127, we additionally determine that Petitioner has not established a reasonable likelihood of prevailing in showing that claim 132 would have been obvious over Eguchi.” slip op. at 26
- Prior constructionPrior construction adoptedDecided for petitioner
“collect light, among other things. Ex. 1001, 3:26–28, 5:16–33, 7:33–41. As such, the district court in the related litigation construed “probe” to mean “fiber-optic instrument to collect light and guide the collected light from one point to another.” Ex. 2001, 21. In explaining this construction, the district court found that, in the context of the challenged patent, “a ‘probe’ is an instrument that is used to collect light from an object,” which “is passed on for analysis.” Id. The district court also determined that the probe in the ’038 patent necessarily is associated with fiber optics. See id. at 19–20 (citing, inter alia, Ex. 1001, 3:26–28, 6:1–11). The court additionally stated that “‘probe’ is a broad term,” and that the extrinsic evidence supported a broad construction whereby “a ‘probe’ is an instrument that is used for collecting information about something.” Id. at 21. We find the district court’s reasoned analysis persuasive. Cf. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–27 (Fed. Cir. 2015) (Although the Board generally is not bound by a previous district court interpretation of a claim term, it is obligated to acknowledge and consider that interpretation in some circumstances.). On this record, we determine that the district court’s construction comports with the usage of “probe” in the Specification, and we adopt it as our own. We additionally observe that the district court did not construe “probe” as having any particular size or form factor. Although certain statements in the Specification describe the probe as “handheld” (see, e.g., Ex. 1001, 3:26–28), the probe is not universally described in this way (see, e.g., id. at 4:10–23). Thus, in the absence of clear and unequivocal evidence indicating that the disclosed probe must be “handheld,” and for purposes of this Decision, we decline to modify the district court’s construction to reflect a particular size or form factor. See Poly–America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“[T]he standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.”). Accordingly, for purposes of this Decision, we construe “probe,” as recited in claim 127 of the ’038 patent, to mean “fiber-optic instrument to collect light and guide the collected light from one point to another.” Based on the current record, we determine that no further terms require explicit construction at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,490,038 - PTAB · Jan 24, 2017 · IPR2016-01476 · APJ Kerry Begley · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), 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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’342 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“art. We determine that in this case, no express articulation of the level of ordinary skill is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We conclude that the plain and ordinary meaning of the word “subsystem” as understood by a person of ordinary skill in the art requires that both the “subsystem” and the “system” to which it is subordinate must be “systems.” As evidence of this construction, we note that a dictionary of electrical and electronics terms defines “subsystem” as “[a] system which is subordinate to another system.” Subsystem, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY 755 (2004) (also defining the term as “[a] system which is a part of, or assists, a larger system”) (Ex. 3001); see subsystem, ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY 2126 (1992) (“a portion of a system that can be treated as a single element in the main system, but that can also be considered a distinct system itself”) (Ex. 3002).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under 37 C.F.R. § 42.104(b)(3), the Petition “must set forth . . . [h]ow the challenged claim is to be construed.” Here, the Petition falls short of this requirement by merely listing, without endorsing, Patent Owner’s proposed construction before the district court under a different claim construction standard supported only by a citation to a claim chart filed in the district court, which lacks any analysis or evidentiary support (e.g., citations to the intrinsic record of the ’342 patent). See Pet. 13–14, 16; Ex. 1004, 47; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 740–43 (Fed. Cir. 2016) (explaining that district courts apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and that this standard differs from the broadest reasonable interpretation standard that the Board applies to unexpired patents). Therefore, Petitioner has not complied with 37 C.F.R. § 42.104(b)(3) or adequately proffered the term for construction in this proceeding. Moreover, having considered the specification of the ’342 patent and the parties’ arguments in this proceeding, we determine that “generated . . . for playing on the car audio/video system,” as recited in claims 49 and 73 of the ’342 patent, does not require an express construction beyond the plain and ordinary meaning of its terms to resolve the issues presented by the 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”). 3. Other Claim Terms Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review on the asserted grounds of unpatentability, we need not address the construction of any other claim terms. See id.; Pet. 13–16; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,342 - Volkswagen Group Of America, Inc. v. Blitzsafe Texas, LLCInstitution deniedPTAB · Jan 13, 2017 · IPR2016-01448 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any challenged claim. Thus, we do not institute an inter partes review of any claim of the ’786 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Neither party proposes a construction for the term “interface.” With regard to an “interface,” the Specification states:” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Ex. 1001, 29:17–31. The sixth paragraph of 35 U.S.C. § 112 provides:1 An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The above-quoted recitations of claim 92 presumptively set forth elements under 35 U.S.C. § 112 ¶ 6, and are construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc); In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“B. Alleged Obviousness of Claims 1, 2, 13, 14, 23, 24, 44, and 47 over Owens, Beckert, and Cooper We have reviewed the Petition and the Preliminary Response, and determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 2, 13, 14, 23, 24, 44, and 47 as obvious over Owens, Beckert, and Cooper. Petitioner has failed to articulate, with reasonable clarity (1) what element of which prior art reference is relied on to meet which element of each claim, and (2) what element from which reference is combined with what element of which other reference or references, and in what manner, to meet what element of each claim. Petitioner has not sufficiently identified differences between the claimed invention and the prior art, as well as the manner in which the prior art teachings are combined to account for such differences.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,489,786
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.