- Uber Technologies, Inc. v. LBT IP II LLCInstitutedPTAB · Dec 7, 2022 · IPR2022-00926 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 8–10 and 13–15 on all grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques.” Pet. 8 (citing, inter alia, Ex. 1002 ¶¶ 27–28, 33). Patent Owner disputes that “two years of work experience is a necessary requirement” for a person of ordinary skill in the art, but Patent Owner nonetheless states that this “distinction is not meaningful or determinative with respect to the issues raised in the petition.” Prelim. Resp. 18 (citing Ex. 2001 ¶¶ 34–35). Patent Owner does not otherwise offer a different definition of the level of ordinary skill in the art. We further note that Patent Owner’s declarant, Dr. Koskinen, applies Petitioner’s definition in his declaration. See Ex. 2001 ¶ 35. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the two instances of “at least,” which introduce ambiguity. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’289 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the preliminary record, we do not agree with Patent Owner that the “first identification code” must identify the device to be tracked. As acknowledged by Patent Owner (Prelim. Resp. 22), the Specification of the ’289 patent describes identification codes for both the first tracking device and for a user.3 See, e.g., Ex. 1001, 7:65–8:49. We also see no indication in 3 We note that the ordinal numbers (i.e., “first” and “second”) applied to “identification code” in the Specification do not necessary track the ordinal the Specification that the recited “first identification code” must be limited to these two possibilities. Thus, we decline to limit the “first identification code” in the manner suggested by Patent Owner, and we instead apply the plain and ordinary meaning to this term. We encourage the parties to address the interpretation of “first identification code” at trial to the extent they do not agree with our preliminary determination. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“In summary, all but one of the General Plastic factors either weigh against exercising discretion to deny institution or are neutral. The other factor favors discretionary denial only marginally. Ultimately, we find that the different petitioner entities and the mere three-day gap between the petitions blunt Patent Owner’s suggestion that the instant petition somehow represents an abusive or unfair serial petition. Therefore, based on the present record, we decline to exercise our discretion to deny institution of an inter partes review under § 314(a).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 the 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). Petitioner’s arguments under § 325(d) are based on its allegations of “substantial overlap relating to Robert” and the two petitioners’ “nearly identical” arguments with respect to secondary references in combination with Robert. Prelim. Resp. 12–13. Yet, even if we were to assume that Patent Owner satisfies the first stage of the Advanced Bionics framework, Patent Owner cannot satisfy the second stage because the Office has not yet adjudicated the prior art and/or arguments that Patent Owner contends are the same or substantially the same. As such, Patent Owner cannot show that the Office “erred in a manner material to the patentability of challenged claims.” For this reason, and based on the present record, we decline to exercise our discretion to deny institution of an inter partes review under § 325(d).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,531,289 - Uber Technologies Inc. v. LBT IP II LLCInstitution deniedPTAB · Dec 7, 2022 · IPR2022-00927 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claim 1 was obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon consideration of the arguments and evidence presented by the parties, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we deny institution of an inter partes review of the ’355 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner that Petitioner has not shown that the combination of Altman and Bliss teaches or suggests claim element 1[B](ii), and accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 is unpatentable over the proffered combination. Claim element 1[B](ii), in relevant part, recites “providing a graphical mapping module comprising menu options . . . comprising one or more tile mapping controls as part of a wizard menu enabling [a] user to reposition graphical mapping tiles . . . from multiple mapping service providers.” Ex. 1001, 24:21–27. We agree with Patent Owner that the prior art cited by Petitioner (including not only Altman and Bliss—and by incorporation, Rasmussen—that are express members of the asserted ground, but also the tertiary Nachman and Diem references not identified by Petitioner as being part of the asserted combination) does not teach or suggest “reposition[ing] graphical mapping tiles . . . from multiple mapping service providers.” Prelim. Resp. 27–30. This deficiency is fatal to the asserted ground. improperly conflate Altman’s and Bliss’s disclosure of multiple potential storage locations for map data with the multiple providers recited in claim 1, and similarly conflate Rasmussen’s, Nachman’s, and Diem’s disclosure of the mere existence of multiple providers with enabling a user to reposition graphical mapping tiles from multiple mapping service providers, as recited in claim 1. Id. As Patent Owner points out, for example (see Prelim. Resp. 29), one of the two paragraphs of Rasmussen cited by Petitioner, taken from the “Background” section of the application, merely states, in relevant part, that Microsoft’s “TerraServer USA site” was, at the time of Rasmussen’s disclosure, using “a tiling approach for displaying satellite images” (Ex. 1016 ¶ 12), while the second cited paragraph, in an entirely separate section of the reference, describing an embodiment of Rasmussen’s own alleged invention with no indication of any connection to the Microsoft TerraServer USA site mentioned in the Background, discloses the use of “commercially available NavTech data that has been compiled by Telcontar . . . into RMF (Rich Map Format) files” that can in a subsequent step be used to make map tiles (id. ¶ 73). Petitioner cites and we find no disclosure in Rasmussen of any additional provider’s data being used along with the cited NavTech data to make map tiles, let alone “reposition[ing] graphical mapping tiles . . . from multiple mapping service providers,” as recited in claim 1. Notwithstanding Petitioner’s and Mr. Andrews’s conclusory characterizations of “using ‘multiple mapping service providers’” as a “simple implementation detail” that “would have been obvious since such third party service providers were well-known and provided the exact features that Altman seeks to include in its maps” (Pet. 33–34; Ex. 1002 would have taught or suggested the claimed method in which a user is enabled to reposition map tiles from multiple service providers, absent hindsight knowledge provided by the ’355 patent itself. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”).” slip op. at 31
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also agree with Patent Owner that the portion of Mr. Andrews’s declaration regarding element 1[B](ii) is entitled to little weight, given that they merely repeat nearly verbatim the corresponding section of the Petition and are no less conclusory. See Prelim. Resp. 30–31; 37 C.F.R. § 42.65(a); 4 Busch, US 2008/0248815 A1, published Oct. 9, 2008 (Ex. 2005). non-trivial difference we find between Mr. Andrews’s declaration and the Petition is that, in paragraph 125 of the declaration, Mr. Andrews offers testimony that “different map providers have different geographic areas of emphasis, so as the user moved from place to place the system may obtain maps tile data from providers who specialize in maps for that geographic area, and this would necessitate obtaining map data from different providers for different geographic areas.” Ex. 1002 ¶ 125. The only support Mr. Andrews provides for that testimony, however, is a citation to the same disclosure in Nachman as cited in the Petition and discussed above that fails to teach or suggest mapping tiles from multiple mapping service providers. See id. (citing Ex. 1041 ¶ 76).” slip op. at 34
- Skill levelSkill level petitioner adoptedOther
“Pet. 8 (citing Ex. 1002 ¶ 28). Patent Owner “does not agree that two years of research, design, development, and/or testing experience specific to GPS or related location tracking techniques is a necessary requirement” to be a person of ordinary skill in the art, but contends, nonetheless, that “that distinction is not meaningful or determinative with respect to the issues raised in the Petition, and thus [is] not addressed.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 38). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the phrase “at least,” which we find introduces ambiguity. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’355 patent and the asserted prior art.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,224,355 - Uber Technologies, Inc. v. LBT IP II LLCInstitution deniedPTAB · Dec 7, 2022 · IPR2022-00879 · APJ Stephen E Belisle · IPR · Institution
Institution was denied for claims 8–21 because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques, or the equivalent, with additional education substituting for experience and vice versa.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“explains this calculation in any further detail, or explains anything about this calculation as it relates to what standard GPS receivers do when calculating position.” Pet. 8 (citing Ex. 1002 ¶¶ 77–79). But Petitioner’s complaints here implicate whether the ’724 patent provides sufficient written description or enablement of the invention defined by claim 13, i.e., issues that are beyond the scope of this inter partes review. Petitioner then concludes, based only on the foregoing: “Therefore, the sole basis for patentability is obvious in view of well-known techniques using standard GPS receivers.” Pet. 8. Petitioner’s declarant makes these same (conclusory) statements verbatim, without more, and with no further explanation or additional citations to evidence. See Ex. 1002 ¶¶ 77–79; Prelim. Resp. 22. We give such conclusory, unsupported assertions by Petitioner’s expert little or no weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (noting that a fact finder is not required to “credit the unsupported assertions of an expert witness”); 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.”). Thus, as discussed above, we find Petitioner’s arguments unpersuasive.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,728,724 - Forescout Technologies, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Nov 15, 2022 · IPR2021-00914 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–13, 15–18, and 20 are unpatentable as obvious over Patrick alone, Patrick and Roese, or Patrick and Gilde.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner contends “a person of ordinary skill in the art . . . at the time of the ’314 patent’s effective filing date would typically be a person with a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity, or a person with a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 4 (citing Cole Decl. ¶¶ 26–28). For our Institution Decision, we adopted this definition. Institution Dec. 7. Patent Owner states that it “does not object” to Petitoner’s definition of the person of ordinary skill. PO Resp. 22. Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore continue to apply Petitioner’s formulation for this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Notwithstanding the parties’ initial position that claim construction is not required, for our Institution Decision we followed the guidance provided by the ’314 patent specification on the meaning of certain terms appearing in the patent. Institution Dec. 8–9. Thus, we construed the following terms: 1. Administrator/Network Administrator – “Administrators delegate workload to Sponsors, view reports and audit trails.” Ex. 1001, 2:2–4. “A Network Administrator has the responsibility of delegating the network management workload.” Id. at 2:11–12. 2. Sponsors – “Sponsors administer control over endpoints requiring network resources.” Id. at 2:4–5. 3. Profiles – “Profiles define the scope and limitations of a Sponsor's” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s argument and find that Petitioner demonstrates a motivation to combine the teachings of Patrick and Roese. Petitioner provides detailed testimony by Dr. Cole supporting the conclusion that a person of ordinary skill would have been motivated to combine Patrick and Roese. Pet. Reply 20–22 (citing Cole Decl. ¶¶ 216–224). Dr. Cole testifies that “Patrick teaches that its system provides ‘flexible policies’ and ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 216 (quoting Ex. 1003 ¶ 41) (alteration in original). He testifies that “Roese describes an exemplary network security system” that is “able to enforce certain restrictions, on an initial and continual basis, based on locations of devices.” Id. ¶ 217 (citing Ex. 1004 ¶ 33) (internal quotation marks omitted). He concludes that “Roese is . . . an example of a ‘suitable entity which can be interacted with programmatically’ as identified in Patrick.” Id. ¶ 218 (citing Ex. 1003 ¶ 41) (internal quotation marks omitted). We agree with Dr. Cole that “Patrick provides a specific motivation to combine, by emphasizing its use of ‘flexible policies’ and explaining its invention ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 222 (quoting Ex. 1003 ¶ 41). Dr. Cole testifies that a person of ordinary skill “would recognize that Roese’s system is one such third party security product, as suggested by Patrick, and also provides additional benefits relating to managing devices, as described in Roese.” Id. ¶ 223. Dr. Cole’s testimony also persuades us of the existence of a reasonable expectation of success in making the combination. Id. ¶ 218 (“A [person of ordinary skill] would therefore understand, consistent with Patrick’s express suggestion, that Patrick’s policy definitions and delegations of authority could be used together with Roese’s network security system to allow for policies specifically focused on managing devices.”). Patent Owner contends that “Petitioner . . . fails to demonstrate with respect to each of the disparate features of Roese relied upon, what the predictable results would be and how it would ‘provide a means to delegate and enforce policies relating to devices’ as alleged by Petitioner.” PO Resp. 42. We do not agree that Petitioner’s showing of motivation to combine, summarized supra, is insufficient. KSR instructs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR Int’l Co., 550 U.S. at 421, see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find, for the reasons given, that Petitioner’s showing meets this standard and is sufficient. Petitioner, therefore, has demonstrated a motivation to combine Patrick with Roese with a reasonable expectation of success.” slip op. at 28
- BurdenDecided for petitioner
“We disagree with Patent Owner’s argument that the Petition is insufficiently particular as to this or any other limitation. See PO Resp. 34– 35. For example, as discussed supra, Dr. Cole’s testimony supports Petitioner’s position that Patrick discloses transferring responsibility with specific references to Patrick. Cole Decl. ¶¶ 110–116. Dr. Cole explains how Patrick teaches delegating authorization from one subject to another. Id. ¶ 111. He relies on Figure 11 of Patrick to further illustrate his opinion. Id. ¶ 112. We do not agree that this testimony is insufficiently specific to show how Patrick meets this limitation or that Petitioner has failed to carry its burden. Moreover, other examples from Dr. Cole’s testimony are presented in the Petition at pages 20–21. There is no improper incorporation by reference to Dr. Cole’s testimony, as suggested by Patent Owner. PO Resp. 35. We therefore do not agree with Patent Owner (see id.) that “the Board should reject all grounds” due to lack of specificity in Petitioner’s case.” slip op. at 23
Patent outcomesUS 8,458,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,458,314 - PTAB · Nov 3, 2022 · IPR2022-00922 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 10, 38, and 101 on all asserted grounds, finding a reasonable likelihood that claim 10 is unpatentable over Heller.
RulingsInstitution decision- Parallel petitionsDenied
“This summary reflects that the pair of petitions do not overlap in the claims challenged, but rather overlap in the sense that both petitions include two “families” of challenges to claims, Heller-based challenges and Gross-based challenges. Patent Owner argues that Petitioner should have presented its Heller-based challenges in one petition and the Gross-based challenges in another petition so that we could have separately decided whether to institute review of each family of challenges. Patent Owner’s argument has merit insofar as presenting each family of challenges against all 11 of the claims that are collectively challenged may have resulted in fewer words overall. We would have preferred Patent Owner’s suggested approach. Nevertheless, we institute review in both proceedings for two primary reasons. First, we find Petitioner’s explanation for why it could not fit both families of challenges into the word-count allocated to one petition reasonable. For example, Petitioner spent a substantial portion of its allocated word-count addressing issues of discretionary denial under §§ 314 and 325(d) on the chance that Patent Owner would request such a denial. See, e.g., Pet. 80–88. Doing so, trimmed the space available to address the merits of its challenges, the subject matter that forms the basis of inter partes review. Ultimately, Patent Owner chose not to request discretionary denial on the issues Petitioner addressed. We consider it reasonable for Petitioner to have used space to address these issues of discretionary denial, with the result that addressing all issues of patentability could not fit in one petition. Petitioner also devoted considerable space explaining the relevant prosecution history and educating the panel on concepts that were within the background knowledge of an ordinarily skilled artisan relating to calibration of glucose monitoring devices and methods. Pet. 8–15, 30–35. These portions of the Petition provide critical context for deciding the merits of all the challenges presented. The merits of Petitioner’s challenges as collectively presented in the ’921 Petition and this Petition warrant an inter partes review, and a trial will resolve the dispute over all those challenges with estoppel effect. Second, we find that material differences exist between the Heller- based and Gross-based challenges that require independent analyses. These material differences are apparent from even a high-level review of the arguments presented in the Petitions and Preliminary Responses. We agree with Patent Owner that substantial overlap exists between the two Petitions when comparing the Heller-based challenges in the two petitions or the Gross-based challenges in the two petitions. Ranking Resp. 2–3. But this overlap reduces the burden that the Patent Owner will bear in responding to those challenges and the burden that we will face in adjudicating them. Accordingly, we discern no undue burden placed upon us or the parties in having a trial in both proceedings so that the merits of the Heller-based and Gross-based challenges can be resolved with estoppel effect by a final written decision. Collectively, the two petitions reasonably challenge the patentability of 11 claims based on two different primary references. We discern nothing unusual about the scope of this dispute that justifies considering only the challenges set forth in the ’921 Petition.” slip op. at 8
- BurdenDecided for petitioner
“Regarding Patent Owner’s first argument, Petitioner persuades us that Heller’s “factory-determined calibration measurements” are reasonably likely to constitute “prior calibration information” that includes “prior sensitivity information associated with the transcutaneous glucose sensor.” First, that the calibration measurements are “factory-determined” implies “prior” generation of the information. Second, Heller expressly describes its processing circuit 109 using this calibration data to “correct signals from sensor 42.” Ex. 1005, 77:6–7. Second, Dr. Smith strongly supports his testimony regarding what an ordinarily skilled artisan “would have recognized” about Heller’s calibration measurements by citing numerous examples of objective evidence that appear to be highly probative based on our initial review. Third, Patent Owner offers no expert testimony at all much less testimony that refutes Dr. Smith’s opinion or establishes that the objective evidence upon which he relies fails to support his opinion. Instead, Patent Owner merely responds with argument from its attorneys and their implied opinion about what an ordinarily skilled artisan “would have recognized” about Heller’s factory-determined calibration measurements. Accordingly, we find Dr. Smith’s testimony to be unopposed at this stage of the proceeding and more than sufficient to meet Petitioner’s burden to establish a reasonable likelihood that Heller describes limitation 10d.” slip op. at 21
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“of the challenged claims expressly recites “means” and all are presumed not to contain terms that are subject to interpretation under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows: The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. . . . When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal citations omitted). At this stage of the proceeding, neither party has presented evidence probative of whether an ordinarily skilled artisan would understand “processor programmed to calibrate . . .” as recited in claim 1 has a “sufficiently definite meaning as the name for structure.” In the absence of such evidence, we must presume that the term is not interpreted as a means-plus-function limitation, just as Petitioner proposes. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (vacating conclusion that “program that can operate” and “code being configured to” were means-plus-function limitations when challenger failed to adduce evidence probative of the understanding of ordinarily skilled artisan). We discern no requirement in Rule 42.104(b)(3) to require Petitioner to advance” slip op. at 12
- Other 314aInstitution denied discretionary otherDenied
“Recognizing that the briefing and evidence before us may not result in a violation of Rule 42.104(b) because the parties place no issue in dispute on whether § 112, ¶ 6 applies, the dissent concludes that we should deny the Petition in our discretion. The exercise of discretion would be warranted to promote the interests of: “efficiency in the patent system, improvement of patent quality, and reduction of counterproductive litigation costs.” Dissent 11–12. We disagree. The District Court of Delaware has stayed its consideration of all issues of patent infringement, patent invalidity, and unenforceability pending resolution of Petitioner’s defense of non-infringement due to license and counterclaim for breach of license. Ex. 1089, 2. Trial in the District Court on the issues not stayed has been set for July 10, 2023. Id. at 12. In effect, the District Court of Delaware likely will not reach the merits of Petitioner’s obviousness arguments until after we enter a final written decision in this proceeding. Petitioner provides the evidence necessary to decide the issues it has presented, and Patent Owner will have a full and fair opportunity to meet that evidence. If Patent Owner wishes to make a case that § 112, ¶ 6 applies to the processor limitations, it is free to do so. After we enter a final written decision, Petitioner will be estopped under 35 U.S.C. § 315(e) from litigating an invalidity defense that it raised or could have raised before us. Assuming that Petitioner were to press an indefiniteness defense based on § 112, ¶ 6 applied to the processor limitations in the District Court, that Court will be able to decide whether positions taken by Petitioner before us would preclude it from advancing that defense in that forum. Simply, we find it to be most efficient for us to resolve the issues of patentability presented by both parties during a trial before the Board and for the District Court to resolve the legal issues presented by the parties in that forum when the time comes, which will exclude invalidity defenses that were or could have been raised by Petitioner here. For all these reasons, we do not discretionarily deny the Petition. D. Legal Standards” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,993,642 - PTAB · Nov 3, 2022 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 1 would be unpatentable as obvious over Heller and Flaherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 5, “Pet.”) to institute an inter partes review of claims 1, 5, 7, 8, 66, 67, 89, and 91 (the “challenged claims”) of U.S. Patent No. 10,993,642 B2 (Ex. 1001, “the ’642 patent”). 35 U.S.C. § 311. DexCom, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenDecided for petitioner
“(1) Heller does not expressly describe “prior calibration information generated before insertion” that “comprises prior sensitivity information,” Prelim. Resp. 19–22; (2) Dr. Smith’s testimony regarding what an ordinarily skilled artisan would have “recognized” about Heller’s “factory-determined calibration measurements” impermissibly modifies Heller without identifying differences between Heller and the other prior art cited by Dr. Smith and fails to demonstrate any motivation for modifying Heller, id. at 23–25; and (3) Petitioner fails to prove that an ordinarily skilled artisan would have had a reasonable expectation of succeeding in modifying Heller, id. at 25–26. None of Patent Owner’s arguments are persuasive on the record before us.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Second, claim 1 does not expressly recite “means” and is thus presumed not to be subject to interpretation as a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows:” slip op. at 9
- Strike new argumentNot reached
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,993,642 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00917 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 35 U.S.C. § 314(a) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 12 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“given their plain and ordinary meaning.” Pet. 30. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claims 1, 19, and 62) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 39–46. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not shown sufficiently that Cheney/Lord discloses a sealing member that is at least partially located over the contact holder. Cheney’s Figure 2 and 3 show connector block 26, which Petitioner alleges is a sealing member, as being supported solely by its sides within aperture 40 of housing member 34, which Petitioner alleges is a contact holder, and no portion of the connector block 26 is above or over any portion of housing member 34. Petitioner has not demonstrated sufficiently that the plan and ordinary meaning of the term “over” in the context of the ’452 patent would have been understood to encompasses such a configuration.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00918 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 35 U.S.C. § 314(a) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 11 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that, for its Petition, all claim terms “should be given their plain and ordinary meaning.” Pet. 27. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claim 41) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 16–31. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We find merit in Patent Owner’s arguments. When considering the disclosures of Cheney, Lord, and Shah in their entirety, as we must, we are not persuaded Petitioner has identified sufficiently a rational underpinning that supports the reasoning for why a skilled artisan would have modified Cheney/Lord in the manner claimed. Petitioner proposes modifying Cheney/Lord by adding a sealing layer, such as the one Shah discloses, to the opposite side of the sensor proximal segment 20 that is connected to connector block 26 to further enhance the seal around the sensor and provide the sensor additional protection against moisture. At first glance this may seem like a valid reason, but further inspection of Cheney, Lord, and Shah demonstrates that those references provide no evidentiary support for the alleged reason. Cheney/Lord describe the sensor proximal segment 20 as being a flexible thin film sensor including elongated thin film conductors embedded or encased between upper and lower layers of insulative material, which has openings for exposing the conductive contact pads 22 that electrically interconnect with the corresponding connective strips 40 in connector block 26, which sealingly engages with sensor proximal segment 20 to hermetically seal the contact pads against moisture ingress. Ex. 1006, 2:11– 23, 3:16–24, 3:34–40, 3:51–4:3; Ex. 1005, 1:33–42, 3:45–57. We find nothing in Cheney/Lord that even suggests a skilled artisan would have had a need for improving the sealing characteristics of the insulative material on the side of the sensor proximal segment 20 that is opposite of the side connected to connector block 26. On the contrary, Cheney/Lord teaches that a hermetic seal can be created by connecting connector block 26 to only the side of the sensor proximal segment 20 with exposed conductive contact pads 22; Cheney/Lord teaches that the other side is already fully embedded or encased within an insulative material. Shah is no more availing as evidence supporting Petitioner’s reasoning. Rather than suggesting a need to further enhance the seal covering the sensor proximal segment 20 on the side opposite of the side with exposed conductive contact pads 22, Shah teaches that it sealing layer 25 is intended “to seal the location where the needle penetrates” mounting base 10 to reach the infusion site and provide “a more sanitary infusion site by keeping the infusion site insulated.” Ex. 1019 ¶ 39, Figs. 2, 3B. As Patent Owner correctly argues, Petitioner’s proposed modification would completely thwart the ability of sealing layer 25 to perform that intended function because the sensor proximal segment 20 is located a significant distance away from the needle penetration area, thus, preventing sealing layer 25 from offering any insulating protection to the infusion site. And contrary to suggesting adding a sealing layer to the unexposed side of the sensor proximal segment 20, Shah suggests there is no importance to having a sealing layer over the sensor’s unexposed side by stating that sealing layer 25 “may be located so that it is only covering the needle insertion area.” Ex. 1019 ¶ 39 (emphasis added). Mr. Leinsing also offers little, if any, support to Petitioner’s reasoning. In fact, the declaration of Mr. Leinsing is largely duplicative of the contentions Petitioner argues in the Petition. Compare Pet. 60–64 with Ex. 1003 ¶¶ 376–388. Most notably, Mr. Leinsing does not even suggest (let alone provide a reasoned basis to show) a skilled artisan would have appreciated the need to further tighten/enhance the seal above the sensor and connector block in Cheney/Lord and provide additional protection of the sensor/connector against moisture; instead, Mr. Leinsing simply states “it would have been obvious to use the sealing layer of Shah on the opposite side of the sensor from Cheney/Lord’s connector block to further tighten/enhance the seal around the sensor and thus provide additional protection of the sensor/connector against moisture.” Ex. 1003 ¶ 386. As a result, we give little persuasive weight to the testimony of Mr. Leinsing. Therefore, we find Petitioner has not demonstrated sufficiently a reasonable likelihood of proving that Cheney/Lord in view of Shah discloses a seal member that “at least partially surrounds the electrical contact and at least a portion of the transcutaneous glucose sensor when the transcutaneous glucose sensor is operably connected to the sensor electronics,” as recited in independent claim 41. Furthermore, as noted above, Petitioner’s contentions regarding the Lord/Shah combination is substantively the same and, as such, the same reasons and result apply.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - PTAB · Nov 2, 2022 · IPR2022-00909 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–5, 12, 19, and 23 on all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over the Guide, alone or with Harper.
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 . . . 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 arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s asserted level of ordinary skill in the art asserting that “the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 8. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’215 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claim limitations which Patent Owner desires Petitioner to construe read clearly and unambiguously. Limitation 1[b] recites the step: evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria; Ex. 1001, 48:39–41. The plain and ordinary meaning of this phrase is that the claimed “second function,” “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. At this stage of the proceeding neither party has indicated that this phrase or any specific terms in the phrase cannot be understood by a person of ordinary skill in the art, nor has either party provided an express claim construction for the Board to consider. Patent Owner contends that [i]n its claim construction briefing in the related litigation, DexCom explained that “second function” should be construed as a “function that provides a predictive alert/alarm” in part because the specification’s statement that “the present systems and methods relate to providing accurate predictive alarms” (Ex[1001], 1:30–33) limits the scope of the invention. Prelim. Resp. 14 (citing Ex. 1024, 15) (emphasis added). Patent Owner’s argument is that the Board should read the term “predictive” from the specification into the meaning of the “second function,” although neither independent claim recites the word “predictive.” Id. What is not clear at this point in the proceeding is why we should read the term “predictive” into claim 1. Patent Owner argues, for example, that Petitioner’s “[g]round 1 reads the ‘second function’ onto an alleged Guide function that does the same thing the alleged first function does – it compares a real-time glucose value against a threshold.” This characterization of the plain meaning of the claim language and the first and second functions is not entirely accurate however. The “second function” in claim 1 is determined based on “non user settable second criteria,” and is readily distinguishable from the “first function” determined based on “user settable second criteria.” See Ex. 1001, 48:36–41. On the evidence and arguments at this stage of the proceeding, we find persuasive Petitioner’s position that the Guide discloses a “first function” that alerts the user as to low and high glucose levels based on user settable thresholds. See Ex. 1004, 54 (“One of the benefits of the DexCom™ STS™ System is your ability to select high and low glucose alerts that will tell you when your glucose values are out of your target range.”). Also, we are persuaded that the Guide teaches a “second function,” “[w]hen the STS Sensor detects a glucose level below 55 mg/dL (3.1 mmol/L) your STS Receiver will vibrate to notify you of a very low glucose value by displaying the following screen:” Ex. 1004, 56. The Guide states that “[y]ou cannot change or turn off the Low Glucose Alarm.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unavailable as of October 2006, instead Patent Owner disputes that the Petition “allege[s] facts sufficient to establish the Guide was a printed publication.” Prelim. Resp. 10 (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). Petitioner however, expressly describes the archived Guide scraped by the Wayback Machine and refers the reader to the declarations of Hall and Hall-Ellis for supporting testimonial evidence as to the asserted public availability of the archived Guide. Pet 11 (citing Ex. 1010; Ex. 1011; Ex. 1014; Ex. 1015). LKQ has made a sufficient evidentiary showing for purposes of institution that the Guide qualifies as prior art under § 102. See Ex. 1010 ¶¶ 7–8, see also Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039 (PTAB Dec. 20, 2019) (Paper 29) (holding that under 35 U.S.C. § 311(b), for purposes of institution, a petitioner must show a reasonable likelihood that an asserted reference qualifies as a printed publication) (Precedential), see also, Sandoz Inc. v. Abbvie Biotechnology Ltd., No. IPR2018-00156, 2018 WL 2735468, *4-5 (P.T.A.B. June 5, 2018) (finding Wayback Machine screenshot and expert testimony adequate evidence to establish FDA website as a prior art printed publication). In addition, Petitioner provides corroborating exhibits, including U.S. Food & Drug Administration Premarket Approval Order indicating, consistent with the Internet Archive records, that DexCom STS Continuous Monitors received pre-market approval on March 24, 2006. Ex. 1014. Also, consistent with both the Internet Archives evidence and the FDA Approval Order, Petitioner provides a June 2006 JP Morgan research paper discussing the American Diabetes Association scientific session in Washington, DC stating that “[h]ighlights included the results of two studies using Abbotts FreeStyle Navigator and two more from Dexcom involving its recently approved STS device.” Ex. 1015, 1. Overall, we determine that Petitioner has shown a reasonable likelihood that the Guide was publicly available more than one year before, October 30, 2012, the filing date of the earliest filed application in the priority chain for the ’215 patent. Patent Owner is in the best position to show when and to whom the Guide was available and may present additional arguments, evidence, and testimony to support its position during trial.” slip op. at 23
Claim construction§ 102 anticipationPatents in suitUS 10,702,215 - Alarm.Com, Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00728 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“After considering the Petition and associated evidence, we exercise” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision and to the extent necessary, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose constructions for any claim terms. See Pet. 6 (citing 37 C.F.R. § 42.100(b)). On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim constructionDiscretionary denialPatents in suitUS 9,349,262
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.