- PTAB · Nov 21, 2024 · IPR2024-00919 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claims 1–21 would have been obvious over Leaning.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“The Board’s application of these factors “is not limited solely to instances when multiple petitions are filed by the same petitioner.” Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 at 2, 9 (PTAB Apr. 2, 2019) (precedential). “Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors,” and if the second petitioner and the first petitioner have a “significant relationship with respect to . . . [the challenged patent],” then the Board will consider the first petition in its General Plastic analysis. Id. at 9–10.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“2. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during Resp. 14, 16–17) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][2] (see Pet. 19–21) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4–6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19–27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded that Leaning is substantially the same as Leaning US, which was previously presented to the Office. b. Advanced Bionics Part Two To determine whether Petitioner has shown material error, we consider Becton, Dickinson factors (c), (e), and (f). Advanced Bionics, Paper 6 at 10. “Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments,” and if that record “is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Id. As Petitioner notes (see Pet. 69), the record regarding the Office’s” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On this record, we are preliminarily persuaded that Leaning teaches that each copy of the video is divided into sub-files that correspond to different temporal portions of the video. See, e.g., Ex. 1004, Abstr., 1:20– 28, 3:5–18, p.7 (table). We are also preliminarily persuaded Leaning teaches that each sub-file represents the same fixed time period (e.g., four seconds), and that each of Leaning’s sub-files has a corresponding sub-file in the other copies. See, e.g., Ex. 1004, Abstr., 6:21–7:2 (including table), 12:8–20. Moreover, we are preliminarily persuaded that Leaning’s sub-files each have a time index because the sub-file names are sequentially numbered. See, e.g., Ex. 1007, 7:1–2, 12:16–20, p. 7 (table); Ex. 1003 ¶¶ 71, 73. Accordingly, Petitioner has sufficiently shown that Leaning teaches elements 1[A][3], 1[A][4], and 1[A][5].8 1[B]: “requesting by the media player a plurality of sequential ones of the files of one of the copies from the set of servers over a plurality of Transmission Control Protocol (TCP) connections based on the time indexes;” Petitioner contends that Leaning teaches and/or renders obvious element 1[B]. Pet. 29–35. According to Petitioner, Leaning teaches that terminal 3 requests a plurality of sequential sub-files of one of the copies from server 1. Id. at 29–31 (citing Ex. 1004, Abstr., 1:12–19, 2:15–18, 5:4– 6:2, 6:27–7:2, 8:6–16, 23:3–10 (claim 1), 24:28–35 (claim 11), 25:17–20 (claim 16); Ex. 1003 ¶ 79; Pet. 21–29). Petitioner also asserts that an 8 Although we do not reach Petitioner’s alternative contention that element 1[A][5] would have been obvious over Leaning, we will evaluate that contention in our final written decision if appropriate.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,868,772 - PTAB · Jul 22, 2024 · IPR2024-00425 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 9, and 10 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response, and informed by the pre-institution record, shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. Petitioner’s challenge over the combination of Beck, Heller, and Lovejoy counsels us not to discretionarily deny institution. Patent Owner does not dispute that Beck and Heller were not before the Office. See Prelim. Resp. 42–43; Prelim. Sur-reply 3. Although Patent Owner characterizes that as “irrelevant” (Prelim. Sur-reply 3), Petitioner asserts it relies on Beck to teach the limitation leading to allowance (Prelim. Reply 3). In fact, the Petition largely relies on Beck, or the combination of Beck and Heller, in its obviousness challenge and only relies on Lovejoy for a sliver of 11 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. first part of Advanced Bionics is not satisfied and do not exercise our discretion to deny institution for this reason. Even if we were to reach the second part of Advanced Bionics, we agree with Petitioner the Office erred in a manner material to the patentability of challenged claims by not applying the combination of Beck, Heller, and Lovejoy during prosecution, as evidenced by Petitioner’s reliance on that combination in its unpatentability challenges. Prelim. Reply 3; see Pet. 69–70. Petitioner specifically points out the Office erred by overlooking Beck’s “disclosure of the limitation that allegedly was missing from the prior art and led to allowance,” i.e., “wherein the remote server authenticates said unique sensor ID . . . and communicates to said wireless device . . . software related to the unique sensor ID.” Prelim. Reply 3. Patent Owner, at most, suggests Petitioner fails to demonstrate the Office erred in a manner material to the patentability of challenged claims because Petitioner’s combination does not show unpatentability. See Prelim. Resp. 43. However, as detailed in our analysis above, Petitioner adequately shows that the claims would have been obvious over the combination of Beck, Heller, and Lovejoy. Accordingly, we do not exercise our discretion to deny institution under § 325(d) over Petitioner’s challenge based on Beck, Heller, and Lovejoy. We need not address whether Patent Owner’s argument that Petitioner’s challenge based on Bandy warrants discretionary denial. Prelim. Resp. 40–42.” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, we determine the plain language and structure of the limitation does not support a construction requiring authentication using both the unique sensor ID and the unique wireless ID, as asserted by Patent Owner. The claim recites “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” but Patent Owner’s construction appears to read out the phrase “associated with” and adds an unrecited requirement to the claim such that the remote server authenticates said unique sensor ID and said unique wireless device ID. Ex. 1001, 19:51–52 (emphasis added). The language and structure of the limitation reads that the unique wireless ID is “associated with” the unique sensor ID. As such, the last portion of the limitation reciting “associated with said unique wireless device ID” serves to further describe the unique sensor ID, specifically, that the unique sensor ID is associated with the unique wireless device ID. 8 In Petitioner’s Reply and Patent Owner’s Sur-reply, the parties dispute the construction of this phrase. See Prelim. Reply 2; Prelim. Sur-reply 1–3. Those arguments go beyond the scope of the briefing we authorized on discretionary denial and inventorship (see Ex. 3001), so we do not consider them here. using both the unique sensor ID and a unique wireless device ID. The Specification does not use, let alone define, the terms “server” or “authentication.” See generally Ex. 1001. To the extent the Specification provides examples of access to a remote computer, those examples describe access on the basis of a sensor ID—but not a wireless device ID. In one example, a wireless device obtains software for a RFID sensor tag from “a centralized database for RFID tags or a diagnostics database that is accessed only by paying an access fee. Subsequently, the ID of the RFID sensor is matched to a given class of sensor (e.g. a glucose sensor) and the software and/or instructions for the analyses are downloaded” to the wireless device. Ex. 1001, 18:16–23 (emphasis added). Another example similarly provides access solely on the basis of a sensor ID: “a patient can . . . upload into the cell phone the necessary information to conduct any given test by matching the ID of the RFID sensor with given software and data tables stored remotely on computer 400.” Id. at 16:50–56 (emphasis added). Accordingly, for institution purposes, we construe “wherein the remote server authenticates said unique sensor ID associated with said unique wireless device ID” such that the remote server’s authentication requires use of a unique sensor ID; but the remote server’s authentication does not require use of the unique wireless device ID.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We are also preliminarily persuaded that Petitioner correctly identifies the recited functions and corresponding structure for these limitations. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); see Pet. 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10–11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). For purposes of this Decision, we apply the constructions identified by Petitioner. These are shown in the table below:” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,969,307 - PTAB · Apr 16, 2024 · IPR2024-00044 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14–20, 22–25, and 27–29 on all petitioned grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i. Conclusion Regarding Claim 1 Petitioner has shown sufficiently at this juncture that the combination of Ogdon and Allen teaches all limitations of claim 1. Petitioner also has put forth a sufficient rationale for combining Allen with Ogdon with a reasonable expectation of success. Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Ogdon and Allen.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“must consider “whether the same or substantially the same art previously was presented to the Office.” Advanced Bionics, Paper 6 at 8. Although we agree with Petitioner (Pet. 63–64) that Ogdon was not cited during prosecution, we still must consider whether Ogdon is substantially the same as Carmel. We determine that Ogdon is not substantially the same as Carmel because there are differences between them material to the way the Office previously considered the art. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). Both parties agree that the Examiner distinguished Carmel during prosecution because it did not teach streamlets of the same duration. Pet. 10–11 (citing Ex. 1002, 1270–71); Prelim. Resp. 37 (citing Ex. 1002, 1270–73). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 27 (quoting Ex. 1004, 2:49–55). For the same reasons discussed above (see supra § II.D.3.f), and based on the present record, we disagree with Patent Owner (Prelim. Resp. 38) that this disclosure does not teach streamlets of the same length. As such, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 41
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’138 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’138 patent. For purposes of this Decision, we determine that Ogdon qualifies as prior art under 35 U.S.C. § 102(b) because Ogdon’s issue date of December 12, 2000, is more than one year before the earliest effective filing date of the challenged claims, which is April 30, 2004. Ex. 1001, code (60); Ex. 1004, code (45). slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 65–67. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 67; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 65, 67; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 22–25) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above. See supra §§ II.D.1, II.D.3.a. Thus, based on the present record, Patent Owner’s arguments regarding this limitation are unavailing.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,470,138 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. 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). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250 - PTAB · May 31, 2023 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7–9, 14, and 20 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 1. Petitioner asserts that its stipulation is the same as the one in Sotera. Id. at 1–2. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera but argues it “cannot cure the fact that [Fintiv] Factors 2, 3, 5 and 6 all remain heavily in favor of denying institution.” See PO Prelim. Sur-Reply 3. factors help the Board assess the potential for conflicting decisions and duplicative efforts when there is a PTAB proceeding held in parallel to district-court litigation. See Interim Procedure 1–2. But here, Petitioner’s Sotera stipulation ensures the grounds that the Board resolves will differ from those considered in the parallel district-court litigation. See id. at 7–8. This eliminates the potential for conflicting decisions and duplicative efforts. See id. Thus, in light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Id. at 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION As explained above, we determine that Petitioner has established a reasonable likelihood of prevailing in its challenge to at least claim 1 of the ’130 patent. Thus, we institute an inter partes review of all challenged claims on all asserted grounds. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted with respect to all claims and all grounds of unpatentability raised in the Petition;” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’130 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 5 (citing Ex. 1003 ¶ 23). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Declaration, Exhibit 1002, in part because the Declaration merely copies the Petition. Prelim. Resp. 22. This argument finds support in our recent decision in Xerox. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential). In Xerox, we denied institution and held a declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning. Although we agree that the Petition and supporting evidence or reasoning. For the reasons explained below, at this stage, we are persuaded that the Petition and Ding Declaration are sufficiently supported by the disclosures from Kwak. The weight given to the Ding Declaration is not dispositive for any disputed issue.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - PTAB · Apr 12, 2023 · IPR2022-01428 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR of claims 1–34 on all grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained below in section II.E.3.a, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing under the district court’s construction and also under that construction as interpreted by Patent Owner. Because the constructions advocated by Patent Owner do not impact the decision whether to institute, we need not resolve this claim construction issue at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 2. “Chip Select Signals,” ”Chip Select Conduits” Claims 6, 11–14, 16–19, and 29–34 recite “chip select signals” or “chip select conduits.” Patent Owner argues that the district court construed the term “chip select signals” and associated “chip select conduits” to “exclude[] situations in which a chip select signal could enable multiple array dies at once” and contends that we should adopt this construction. Prelim. Resp. 23–24 (citing Ex. 2004, 33–34). For the reasons explained below in section II.E.6, we determine that Petitioner has demonstrated a and, therefore, we need not further address this claim construction at this time.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 20 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,787,060 - PTAB · Apr 12, 2023 · IPR2022-01427 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 over all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: Samsung stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 9,318,160 on the grounds presented in Samsung’s petition in IPR2022-01427, Samsung will not pursue an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Ex. 1051. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Pet. 23. Patent Owner argues that we should apply the district court’s constructions for “array die” and “chip select signals.” Prelim. Resp. 21–25. We provide a preliminary analysis of each of these terms below. The parties may address these and any other claim construction issues during the trial, and our final decision including any claim constructions will be based on the full record developed during the trial. 1. “Array Die” The district court construed “array die” as “array die that is different from a DRAM circuit” based on an argument during prosecution of the ’060 DRAM circuits 206A–D in U.S. Patent Application Publication 2008/0025137 A1 (Ex. 1011 (“Rajan137”)). Ex. 2004, 31–32 (citing January 13, 2014 Amendment at 10); see Ex. 1002 (’060 prosecution history), 465 (January 13, 2014 Amendment at 10) (“Rajan does not disclose ‘a plurality of stacked array dies.’ Rajan merely stacks DRAM circuits 206A–D, which are different from array dies.”). Patent Owner argues that we should adopt the district court’s construction so that there is a “consistent construction” between the two proceedings. Prelim. Resp. 23–24. Patent Owner, however, qualifies its position by arguing that “the statements it made during prosecution were specific to Rajan137’s DRAM circuits 206A–D and this should be made clear to the jury through the order instead of having the expert explain it at trial.” Prelim. Resp. 24 n.4 (citing Ex. 2005 (Patent Owner’s objections to the district court claim construction order), 1–2); see Ex. 2005, 2 (“[T]he Court should make clear that the claimed array die is one that is ‘different from Rajan’s DRAM circuits 206A–D.’”). Although Patent Owner appears to walk this qualification back by arguing in its Sur-reply that it withdrew its objections to the district court claim construction (Sur-reply 1–2 (citing Exs. 2010, 2011)), Patent Owner’s position here still appears to be that the term “array die” is one that is different from DRAM circuits 206A–D of Rajan137. For example, in disputing Petitioner’s unpatentability contentions, Patent Owner argues that “the Petition contains no analysis on how or why Kim’s or Riho’s memory dies are different from Rajan137’s DRAM circuits.” Prelim. Resp. 26–27; see also Prelim. Resp. 27 (“Missing from the Petition is any analysis on why the referenced DRAM dies in Grounds 1 and 2 differ from Rajan137’s” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that 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. 5 (citing Ex. 1003 ¶ 60). Petitioner also asserts that “[a]dditional training can substitute for educational or research experience, and vice versa,” and Petitioner identifies particular technology with which a person of ordinary skill in the art would 7 At this stage, Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Council) industry standards and DRAM (dynamic random access memory) and SDRAM (synchronous DRAM) memory modules. Pet. 5. Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Pet. 98–99 (citing Ex. 1016 ¶¶ 40, 45–46; Ex. 1030, 135–36; Ex. 1038, 68; Ex. 1003 ¶¶ 589–606). Petitioner argues that Riho teaches that varying impedances between TSVs that result from, for example, manufacturing processes and chip placement, should be taken into account. Pet. 99–100 (citing Ex. 1016 ¶¶ 55–56, 61); see Ex. 1016 ¶ 61 (discussing that the chip located closest to the control chip has “smaller penetrating through resistance” than a chip farther from the control chip). Petitioner contends that a person of ordinary skill “would have been motivated by Riho2 to account for these variations by selectively activating one or more drivers . . . to achieve the optimal driving strength for each ‘data conduit,’ thus saving power.” Pet. 100 (citing Ex. 1018 ¶¶ 96–97, Fig. 7A; Ex. 1017, 1:22–24, 5:11–14, Fig. 5; Ex. 1003 ¶¶ 598–603); see also Pet. 100–01 (asserting that “[o]ther contemporaneous references confirm that adjusting the driver strength to account for the position of a die in stack was well known at the time” (citing Ex. 1039, code (57), 7:46–49, Fig. 6)). 3. Patent Owner’s Arguments and Our Preliminary Analysis Patent Owner makes two arguments against Petitioner’s challenge to” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,318,160 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240 - PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “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 the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,930,276
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.