- PTAB · Jan 28, 2025 · IPR2024-01083 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7, 9, 10, and 101 on the asserted §103 ground over Ahn, Chaudhri, and Hinckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 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 institute an inter partes review as to claims 1–3, 7, 9, 10, and 101 of the ’413 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 30. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 6. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner and Patent Owner contend that no claims need to be construed in order to resolve a controversy. Pet. 4– 5; Prelim. Resp. 6–7. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial. We highlight that for the term “a magnitude of the blurring,” Patent Owner contends that “the amount of surface area that a translucent menu is displayed over a screen is not a magnitude of the blurring,” but provides no further construction of the term, other than a statement that even under Petitioner’s interpretation of “blurring,” the grounds are deficient. Prelim. Resp. 32–33 & n.4. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we apply this proposed construction of “a magnitude of the blurring” as discussed below in our analysis of limitation [1.d.ii]; the construction of this term may be addressed by the parties as this inter partes review proceeds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,642,413 - PTAB · Jan 14, 2025 · IPR2024-01087 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–13, 15–35, and 37–43 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner’s showing discussed above regarding Limitations [1.i–1.l] to be sufficient for institution. Petitioner’s showing in large measure relies on Hackborn’s straightforward description of changing the appearance of grass displayed in “live” wallpaper in response to a finger swipe in combination with Westerman’s disclosures of interpreting user input on touch screens as swipes. See, e.g., Pet. 22–23; Ex. 1004 ¶¶ 28, 33; Ex. 1005 ¶¶ 18–19. With regard to the contested Limitations [1.i and 1.k], we note particularly that Petitioner’s combination relies on Westerman’s disclosure of interpreting user inputs that exceed various thresholds as “a swipe event.” This showing is sufficient for institution to show the threshold determination required by Limitation [1.j]. See, e.g., Ex. 1005 ¶¶ 19; Pet. 22 (citing Ex. 1005 ¶ 19). Petitioner’s combination relies on Hackborn’s animation of the grass on the wallpaper “that makes the grass blades look as if the finger is actually contacting them as it drags across the screen of the device.” Ex. 1004 ¶ 33; see Pet. 23 (quoting Ex. 1004 ¶ 33). On this preliminary record, Petitioner’s position that “the farther the swipe, the more extreme the grass movement expected from Hackborn” naturally follows from Hackborn’s description. Pet. 23. As such, we determine Petitioner’s showing that the proposed combination of Hackborn and Westerman changes the grass appearance based at least in part of the magnitude of the swipe to be sufficient for institution for Limitation [1.k].” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 9 n.2 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Ex. 1003 ¶ 26.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we agree with the parties that no terms need to be construed expressly. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hackborn’s mobile device with a touch screen able to display “live” wallpaper and Westerman’s techniques for interpreting swipe gesture inputs, including distinguishing between tap and swipe gestures using predetermined thresholds. Pet. 9–11, 12–13; see Pet. 9–14 (describing Petitioner’s “Hackborn-Westerman Combination”). Petitioner contends that “[a] POSITA reviewing Hackborn would have naturally looked to Westerman to better understand how to implement Hackborn’s teachings, for example, how to discern between different user inputs (e.g., tap or swipe).” Pet. 12–13 (citing Ex. 1003 ¶ 52). Petitioner contends that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner Petitioner proposes. Pet. 13–14. Specifically, Petitioner asserts that, because “recognizing predetermined touch inputs was known, and Hackborn and Westerman both describe the use of touchscreen devices and would have reasonably understood the combination of Hackborn and Westerman to be successful with no unexpected results.” Pet. 14 (citing Ex. 1003 ¶ 53; Ex. 1004 ¶ 28, Ex. 1005 ¶¶ 18, 19, 25, 41, 59, 61–64).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,656,755 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless Inc.All claims unpatentablePTAB · Jan 30, 2024 · IPR2022-01212 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–3 as obvious over Leng, and claims 4–12 as obvious over Leng, Cannon, and Gupta.
RulingsFinal written decision- Skill levelOther
“B. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). 1. Determining Load Percentage” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“persuasive. Accordingly, we determine that Petitioner shows by a preponderance of evidence claim 1 would have been obvious over Leng alone or the combined teachings of Leng and Cannon.” slip op. at 93
Patent outcomesUS 8,682,338 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,682,338 - Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/SAll claims unpatentablePTAB · Jan 22, 2024 · IPR2022-01318 · APJ Jason W Melvin · IPR · Final written decision
Claims 1, 2, 6 are unpatentable as obvious over Duan; claims 5, 8 are unpatentable as obvious over Duan and Wu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2–3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex- 1001,1:11–47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner has not proposed a level of ordinary skill in the art. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our analysis of the proceeding, we conclude that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“disclosures. Pet. 17–45. Petitioner maps the claimed reservoir to Duan’s “structure formed by an accommodation chamber 21, lower cover 225, cap 3, and cooling plate 1.” Id. at 18. Petitioner maps the claimed double-sided chassis to Duan’s accommodation chamber 21 and the claimed impeller cover to Duan’s lower cover 225. Id. at 22–27. Petitioner maps the claimed thermal-exchange chamber to Duan’s cap 3 and cooling plate 1, with heat-absorbing face 11 and cooling plate 1 corresponding to the claimed heat exchanging interface. Id. at 27–36. Petitioner maps the claimed radiator to Duan’s cooling stage 53. Id. at 36–39. Petitioner asserts that Duan’s inlet is “below a center of the impeller” because it is along the axis about which the impeller rotates. Id. at 39–41. Petitioner asserts that Duan’s lower cover 225 defines an outlet tangential to the impeller’s circumference. Id. at 41–45. In summary, Petitioner asserts that Duan, without modification, discloses all of claim 1’s limitations. Patent Owner does not challenge Petitioner’s contentions, as it has filed no Patent Owner Response. We have reviewed Petitioner’s contentions and conclude that they show by a preponderance of the evidence that claim 1’s subject matter would have been obvious over Duan. See Pet. 17– 45. We adopt Petition’s unchallenged contentions as our analysis.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As to claim 5, Petitioner asserts that it would have been obvious to use Wu’s approach to securing chassis and heat-exchanging interface to the heat generating component, because Duan discusses the need to assemble its components but does not provide detailed instruction. Id. Thus, the modification would provide the benefit of securing Duan’s cooling plate module and cooling plate to the CPU. Id. at 72. For claim 8, Petitioner asserts that it would have been obvious to use Wu’s approach to blowing air through the radiator using a fan driven by a motor separate from the pump’s motor. Id. at 72–73. Petitioner reasons that doing so would improve Duan’s performance by increasing heat dissipation. Id. at 74. We agree that Petitioner’s contentions support the modification with rational underpinning.” slip op. at 12
Patent outcomesUS 10,078,355 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,078,355 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi; the Board did not reach the Spiers grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“the combination of Harris and FBDIMM Standards and relies on the Declaration of Dr. Andrew Wolfe (Ex. 1003) in support. Pet. 14–40. For the reasons that follow, we are persuaded that the evidence, including Dr. Wolfe’s testimony, supports Petitioner’s showing and establishes by a preponderance of the evidence that these claims are unpatentable.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner’s contention that “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” See Reply 2. The ’054 patent states In certain embodiments, the device contains a high density Flash memory with a low density DRAM, wherein the DRAM is used as a data buffer for read/write operation. The Flash serves as the main memory. Ex. 1001, 11:3–6 (emphases added). This is the only mention of “main memory” in the ’054 patent. That the Flash memory serves as “main memory” in “certain embodiments” implies that there may be other embodiments in which this is not the case. Accordingly, we agree with Petitioner that the term “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 16
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00999 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi, with Hajeck also supporting Ground 3; Grounds 4 and 5 were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. The prior art may reflect an appropriate level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001). Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“conversion for double-rank DIMMs can be accommodated with a form factor design of approximately about one square inch (both sides of the printed circuit board).” Ex. 1023 ¶ 13. Thus, Harris indicates that the VRM circuitry to generate two regulated voltages can fit within this space. Patent Owner argues that Petitioner’s evidence shows that each ADP1821 converter package would be about 0.193 by 0.236 inches. Sur-Reply 12 (citing Ex. 1078, 20–23). This means three ADP1821 converters would occupy about 40% of the available space. Patent Owner does not demonstrate that the remaining 60% of available space would have been insufficient to accommodate the additional components required for three voltage converters. Id. at 12–13. In any case, we do not view Harris’s disclosure of “approximately about one square inch” to limit the applicability of its teachings to a person of ordinary skill in the art. In the same paragraph, Harris states that the form factor “may be suitably modified.” Ex. 1023 ¶ 13. Patent Owner further argues that “independent voltage sources for different voltages would require specific control circuitry to delay and more precisely control each voltage source’s ramping rate, adding complexity and cost without commensurate benefits.” Sur-Reply 14 (citing Ex. 2061 ¶ 90). However, Dr. Wolfe states that it is simpler to use multiple regulators for multiple voltages since a single regulator that generates multiple voltages is more complicated than multiple regulators. Ex. 2060, 53:16–54:14, 89:1–21, cited in Reply 14. Dr. Wolfe further indicates that buck converters can be in some applications “extremely small.” Ex. 2060, 89:11–15. Dr. Wolfe further testifies that multiple smaller converters may be less costly than a larger single converter because of component costs, separated spaces available for converters on circuit board, and other “ordinary engineering factors.” Id. at 45:21–46:10. Although Patent Owner may be correct that individual control of multiple voltage regulators would have required additional control circuitry, this does not meaningfully undermine the benefits that Petitioner mentions including permitting power sequencing, independent control of voltages, improved efficiency without generating excess heat or requiring cooling devices, and saving power. Pet. 29–30 (citing id. at 14–19; Ex. 1028, 17–20; Ex. 1026, 2–3, 9; Ex. 1028, 30–32; Ex. 1040, 1, 23–24 (Figs. 22–25); Ex. 1041, 1, 13; Ex. 1048, 3; Ex. 1058, 5; Ex. 1059, 5:23–30; Ex. 1062, 11, 13; Ex. 1064 ¶ 101; Ex. 1003 ¶¶ 240, 255). Dr. Wolfe testified that, in at least some circumstances, multiple converters may be less complicated, less costly, and take up less space. Ex. 2060, 45:21–46:10, 89:11–15. Patent Owner’s argument that a single converter generating multiple voltages would be better in some circumstances does not negate that Petitioner’s proposed use of multiple converters for multiple voltages would have been preferred in other circumstances that a person of ordinary skill in the art would have recognized. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Thus, Patent Owner’s argument does not undermine Petitioner’s showing of a motivation to combine Harris and the FBDIMM Standards.” slip op. at 25
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00838 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show that Vrazel’s encoder or encoder and pre-distorter provided the claimed m-ary modulator for claims 1–3, 5, 6, 8, 10–17, 22, and 23.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited “m-ary modulator” in any of the challenged independent claims. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1, 22, or 23 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because it is dispositive, we focus our analysis on each independent claim’s recitation of “an m-ary modulator for increasing the number of bits per symbol in the first electrical data signal to produce a first m-ary modulation signal.” Ex. 1001, 15:6–8 (claim 1), 17:13–15 (claim 22), 18:9– 11 (claim 23). In addressing this limitation, Petitioner relies solely on Vrazel, which Petitioner contends “discloses this limitation in at least two ways.” Pet. 28 (addressing claim 1), 64 (addressing claim 22 by referring to analysis for claim 1), 66 (addressing claim 23 by referring to analysis for claim 1).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,771,181 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00835 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–7, 9, and 11–20 were unpatentable over Pang and Vrazel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing.” Pet. 7. Petitioner adds that “[m]ore experience can supplement less education and vice versa,” and supports its proposal with testimony by Dr. Min. Id.; Ex. 1003 ¶ 41. Patent Owner does not specifically address the level of ordinary skill in its Preliminary Response. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Min’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6–7. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,263,723 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution deniedPTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,010,330
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.