• Uber Technologies, Inc. v. LBT IP II LLCInstituted
  PTAB · 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 · Graham
  Patents in suitUS 8,531,289
• Uber Technologies Inc. v. LBT IP II LLCInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 8,224,355
• Uber Technologies, Inc. v. LBT IP II LLCInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 7,728,724
• Forescout Technologies, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,458,314
• Alarm.Com, Inc. v. Vivint, Inc.Institution denied
  PTAB · 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 denial
  Patents in suitUS 9,349,262
• Microsoft Corporation v. Throughputer, Inc.Institution denied
  PTAB · Nov 1, 2022 · IPR2022-00757 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution on claims 1–24 under § 325(d), finding the asserted art substantially the same as art considered during prosecution and no material Office error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “considered by the Examiner during prosecution. As noted above, the Petition relies primarily on Nollet, in view of the knowledge of one of ordinary skill in the art, for teaching each limitation in the independent challenged claims. See Pet. 38–60, 67–72. Although the Petition cites additional teachings in Tuan, Miller, and Redaelli for certain limitations (see id.), Petitioner has not specifically identified any limitations for which the cited disclosure in Tuan, Miller, or Redaelli is not cumulative to that in Nollet. Rather, Petitioner asserts, for example, that “Nollet and Tuan are directed to similar systems that assign reconfigurable tiles of a hardware device to tasks of an application” (id. at 32), and that “Nollet and Miller are both directed to efficient resource sharing among applications, including with the use of reconfigurable devices, such as FPGAs” (id. at 33). Moreover, Petitioner reasons that combining the teachings of Tuan and Miller with those of Nollet “merely involves incorporating known features that are explicitly disclosed in Tuan and/or Miller and would have been understood by [one of ordinary skill in the art] as likely present but not explicitly disclosed by Nollet.” Id. at 34. Accordingly, we understand the Petition to be applying Tuan and Miller mainly as alternatives to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. Although Petitioner highlights the Petition’s citation to Redaelli for claim element [1.10], quoted above in § I.E, and argues that the Office did not find this limitation to be present in the prior art (Pet. 5), Petitioner relies primarily on Nollet for element [1.10] (see id. at 58–59). Specifically, the Petition asserts that one of ordinary skill in the art “would have understood Nollet as minimizing reconfiguration of a processing unit assigned to a task that has a preference for that processing unit when the processing unit is already executing the task and has not yet completed it,” and only relies on Redaelli “[a]lternatively, with respect to [the obviousness ground based on Nollet, Tuan, Miller, and Redaelli].” Id. at 59. Further, Petitioner asserts that “[l]ike Nollet, Redaelli is directed to partially and dynamically reconfigurable FPGAs,” and reasons that adding the teachings of Redaelli to the combined teachings of Nollet, Tuan, and Miller “merely involves incorporating known features that are explicitly disclosed by Redaelli and would have been understood by [one of ordinary skill in the art] as likely present, but not explicitly disclosed by Nollet.” Id. at 37. Therefore, as with Tuan and Miller, Petitioner appears to apply Redaelli as an alternative to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. In addition, Petitioner fails to distinguish the relied upon disclosure in Redaelli from Creamer or Young, both of which were cited and substantively discussed by the Examiner in the Notice of Allowance. See Ex. 1002, 87– 88.8 Based on the current record, we determine that Tuan, Miller, and Redaelli are essentially cumulative to Nollet or other prior art cited by the Examiner, and conclude that the first part of the Advanced Bionics framework is satisfied. See Advanced Bionics, Paper 6 at 7–8. b) Whether the Same or Substantially the Same Arguments Previously Were” slip op. at 18

  Discretionary denialcites Phillips
  Patents in suitUS 10,963,306
• Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for 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

    “phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,232,158
• Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.All claims unpatentable
  PTAB · Oct 12, 2022 · IPR2021-00672 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 19–27 are unpatentable as obvious over Holbrook and King under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a person with a Bachelor of Science degree in engineering (e.g., electrical, computer, mechanical, petroleum engineering), computer science, or an equivalent degree” and, through education or experience, would have “at least two years of experience in the field of computer programming, working with computer systems, user interfaces, and control systems.” Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Patent Owner does not contest Petitioner’s definition or offer a definition of its own. See generally PO Resp. We note that Patent Owner’s 3 The parties have not directed us to any such objective evidence. expert, Dr. Gildin, agrees with Petitioner’s definition. See Ex. 2011 ¶ 44 (“I agree with Mr. Sharma’s definition for a POSITA as of May 2007.” (citing Ex. 1003 ¶ 63)). We find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’593 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In the Institution Decision, “we interpret[ed] ‘well prog’ to have its ordinary and customary meaning of a document containing information for planning and chronicling the steps of drilling a well, and that the well prog may be in the form of a non-computer readable document.” Inst. Dec. 14. We note that the court in the Texas litigation interpreted this term in the same manner. See Ex. 2015, 12. During the hearing, both parties agreed with our interpretation of “well prog” as set forth in the Institution Decision. Tr. 7:16–23; 23:4–10. Accordingly, for the reasons set forth in the Institution Decision (see Inst. Dec. 12–14), we reaffirm our interpretation of “well prog” to have its ordinary and customary meaning of a document containing information for planning and chronicling the steps of drilling a well, and that the well prog may be in the form of a non-computer readable document.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “We determine that we need not explicitly construe any other claim term to resolve the parties’ controversies. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original)).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Notably, Patent Owner cites to Mr. Sharma’s deposition testimony, not his direct declaration testimony. Even if we were to agree with Patent Owner’s assertions, such assertions would not persuade us to discount Mr. Sharma’s direct testimony. Rather than arguing that Holbrook expressly discloses that its well drilling plan contains a bit wear limit, Mr. Sharma and the Petition argue that an ordinarily skilled artisan “would understand that [an] abrasive wear limit is set forth in Holbrook’s well drilling plan.” Pet. 29 (citing Ex. 1003 ¶ 95; Ex. 1006, 1:7–18, 7:15–18, 7:20–23); Ex. 1003 ¶ 95. This assertion is supported by Holbrook itself, which explains that the well drilling plan “at least roughly project[s] the timing of such activities as the replacement of the drill bit,” which may be based on “a certain numerical value, identified in advance, as the limit for a given bit.” Ex. 1006, 1:10–14, 7:20–23; see also Pet. 29 (citing same). Nor are we persuaded that Petitioner presents new arguments in its Reply. To the contrary, the Petition argues that changing the bit is an action item based on a bit wear limit set forth in the well drilling plan. See, e.g., Pet. 29 (arguing that an ordinarily skilled artisan would understand the bit wear limit to be in the well drilling plan and, when the limit is reached, the operator instructs that the bit be “removed and retired.”). Accordingly, on this record, Holbrook and King support Petitioner’s” slip op. at 23

  Patent outcomesUS 7,860,593 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,860,593
• Toyota Motor Corp. v. Intellectual Ventures II, LLCInstituted
  PTAB · Oct 12, 2022 · IPR2022-00708 · APJ Matthew S Meyers · IPR · Institution

  The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) 4–5 (“Interim Procedures”).9 Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “[t]he petition presents ‘compelling evidence of unpatentability.’” Pet. Reply 1 (citing Interim Procedures 1). As Petitioner notes, “despite the centrality of the merits to the Fintiv analysis, the POPR is silent on the substance of the petition.” Id. For the reasons below in our analysis, we determine that the merits of Petitioner’s anticipation grounds based on Fernandez appear to be particularly strong for the independent claims and for the dependent claims for this ground. See infra § III.G (explaining that, on the current record, slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. By contrast, here Petitioner asserts that it “has no control over the [429] IPR, did not participate or provide input into the [429] IPR, and had no knowledge of the [429] IPR until after it was filed.” Pet. 15; see also Pet. Reply 2. Although we agree with Patent Owner that Unified’s subscription fees provide an incentive to challenge patents asserted against its members, and recognize that Unified has challenged at least eight patents asserted against Petitioner in the past (Prelim. Resp. 25–27), that alone does not create the type of “significant relationship” that was found in Valve to favor denying institution.10 Moreover, the Director recently initiated a sua sponte Director review “to clarify the application of General Plastic.” IPR2022-00861, Paper 18 at 3 (PTAB Aug. 23, 2022). There, the Director determined that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Id. at 5. The Director stated that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from 10 See, e.g., Netflix Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00052, Paper 42 at 8–11 (PTAB May 14, 2020); Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404, Paper 12 at 12–13 (PTAB Jan. 22, 2020) (finding petitioner’s membership in Unified did not amount to a relationship that justifies discretionary denial in light of other General Plastic factors); Apple, Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 7 at 7–8 (PTAB Apr. 21, 2020). later developments.” Id. Here, road-mapping is minimized because the present Petition was filed less than two months after the petition in the 429 IPR, no patent owner preliminary response was filed at that time, and no decision to institute was issued to refine the later petition. See Pet. 16. This is further evident from our below discussion of General Plastic factors 2 and 3.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of claims 1–20. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Having considered Petitioner’s unrebutted position, we conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. 3. Dependent Claims 2 and 4–7 Petitioner contends that the additional limitations of dependent claims 2 and 4–7 are disclosed by Flick. Pet. 27–32. Patent Owner does not specifically dispute Petitioner’s contentions for dependent claims 2 and 4–7 at this time. See generally Prelim. Resp. Petitioner has made a sufficient showing that Flick discloses the limitations of these dependent claims by providing an analysis of each limitation and a comparison of the limitations to the disclosure of Flick. See Pet. 27–32. We have reviewed Petitioner’s cited evidence and explanation regarding why Flick anticipates claims 2 and 4–7, and find it sufficient at this stage. For example, claim 2 requires that “the information about the vehicle comprises one or more of a location of the vehicle, a time that the vehicle was at a location, or a speed of the vehicle.” Ex. 1001, 10:59–62. Flick discloses (“‘vehicle speed and location that the speeding started and how long speeding accrued’ (Detected from GPS).”) Ex. 1005 ¶ 147. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Flick anticipates claims 2 and 4–7.” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,291,475
• Microsoft Corporation v. Throughputer, Inc.Institution denied
  PTAB · Oct 11, 2022 · IPR2022-00758 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution on claims 1–23 because Sandstrom-1 was not prior art in light of the patent’s priority date, so Petitioner did not meet the institution threshold.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’242 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Office was satisfied that the ’731 application, which had issued as the ’953 patent, properly claimed priority to the preceding applications in the 2012 line, and that all intermediate applications also included proper priority claims. It thus follows that, absent any defects in the priority claims of the subsequent applications, including the application that issued as the ’242 patent, the remedial steps taken by the applicant and approved by the Office during prosecution and post-issuance of the ’953 patent also render proper the priority claims of the subsequent applications. Petitioner has not persuasively pointed us to any additional defects not addressed previously by the Office in the priority chain of the ’242 patent in the 2012 line. Nor has Petitioner identified legal authority for the Board to revisit the January 2021 Decision’s finding that the priority claims of the ’731 application met the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he reference as set forth in the [second corrected ADS] filed March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2) and 1.78(a)(3).”).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “For these reasons, Petitioner has not persuaded us that there is a break in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,430,242

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.