- PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01116 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success for the Ahn and Chaudhri obviousness challenge.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition second on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),5 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of two petitions in this situation, and because this Petition is ranked second, we do not reproduce that analysis here.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has sufficiently shown how Ahn teaches or suggests limitation 2.d of claim 2, and that the proposed combination of Ahn and Chaudhri teaches or suggests this limitation.” slip op. at 21
- Skill levelOther
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“blur[ring] . . . at least a portion of” an object, as recited in independent claims 2 and 225, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - 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 · Nov 21, 2024 · IPR2024-00918 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1–10 and 12–16 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)Denied
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) 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; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: 13 Like the parties, we focus our analysis on Leaning. See Pet. 67–69; Prelim. Resp. 14–22; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Gamble. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Gamble’s limited role in Petitioner’s ground (see Pet. 58–60) and during prosecution (see, e.g., Ex. 1002, 208). art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments). Advanced Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. 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 prosecution. See Pet. 67–68. We agree with Patent Owner (see Prelim. Resp. 14–17) 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][3] (see Pet. 20–22) 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. consideration of Leaning US is nearly silent. Neither the applicants nor the examiner discussed Leaning US, and the examiner did not use it as a basis of any rejection. Rather, Leaning US was only cited on a twenty-five page Information Disclosure Statement (IDS) along with 237 other references. See Ex. 1002, 7–31. Given the volume of the applicants’ disclosure, it would not be surprising if the examiner overlooked material information in it. Because the Office’s evaluation of Leaning US was minimal, we find that factor (c) weighs against exercising discretion to deny institution. As for factors (e) and (f), Petitioner has shown that the Office erred by” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“The legal question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,407,564 - PTAB · Nov 21, 2024 · IPR2024-00917 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR of claims 1–18 on both asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
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
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 14 Like the parties, we focus our analysis on Leaning. See Pet. 59–61; Prelim. Resp. 14–23; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Ala-Honkola. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Ala-Honkola’s limited role in Petitioner’s ground (see Pet. 50–52) and during prosecution (see, e.g., Ex. 1002, 81–82). and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. 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 prosecution of related, ancestor applications. See Pet. 60. We agree with Patent Owner (see Prelim. Resp. 14–15, 17–18) 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][3] (see Pet. 20–22) 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” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“On this record, the findings from the ITC Investigation regarding objective indicia do not undermine the sufficiency of Petitioner’s obviousness showing for purposes of institution. Our preliminary record includes no evidence of long-felt need, failure of others, unexpected results, commercial success, or industry praise. In addition, Patent Owner has not yet shown a nexus between any such evidence and the claimed invention. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.”); see also id. (“The patentee bears the burden of showing that a nexus exists.”); ZUP, LLC patentee “bears the burden of production with respect to evidence of secondary considerations of nonobviousness”). Patent Owner will have the opportunity during the trial to present and develop arguments that objective indicia show that the challenged claims would not have been obvious, and our final written decision will be based on the full trial record.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,757,156 - PTAB · Nov 21, 2024 · IPR2024-00940 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 1–20 of the ’234 patent on all grounds of unpatentability presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) 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; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including:” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 5. Notwithstanding, Patent Owner asserts that “resolution of such dispute is not necessary for the Board to make a determination regarding institution.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,991,234 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 10–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” 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.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,171,268
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.