- Apple, Inc. v. Alivecor, Inc.InstitutedPTAB · Dec 8, 2021 · IPR2021-00972 · APJ David Cotta · IPR · Institution
Instituted IPR of claims 1–23 on all three asserted §103 grounds; Apple showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We typically take courts’ trial schedules at “face value,” and decline Petitioner’s invitation to speculate that the target date for completion of the ITC Investigation will slip as a result of the COVID-19 pandemic. Fintiv, IPR2020-00019, Paper 15 at 13 (informative). Accordingly, for purposes of analyzing this factor, we assume that the ITC Investigation will conclude on October 26, 2022. We also decline Petitioner’s invitation to assume an earlier date for issuance of our FWD. Although we appreciate Petitioner’s willingness to expedite resolution of this case, Patent Owner raises valid concerns that compressing the reply period will also compress the window for taking depositions. Moreover, the statutory due date for our FWD is triggered by the date of our institution decision and is unaffected by the date on which Petitioner files its reply. See 35 U.S.C. § 316(a)(11). Given that our FWD in this case is due seven weeks after the targeted completion of the ITC Investigation, we determine that this factor weighs marginally in favor of exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner shows, based on this preliminary record, where each of the limitations of the challenged claims is taught or suggested by the combination of Shmueli and Osorio. Pet. 11–64. Petitioner’s assertions above are backed by the cited prior art and by the testimony of its declarant, Dr. Chaitman. Id.; see also Ex. 1003 ¶¶ 68–150. On this preliminary record, we determine that Petitioner’s arguments and evidence are sufficient for purposes of institution. We focus our discussion on Patent Owner’s arguments that Petitioner has not sufficiently supported a motivation to combine Shmueli and Osorio and that Shmueli and Osorio do not disclose “key elements” of the independent claims. Prelim. Resp. 30–42.” slip op. at 36
- Skill levelSkill level board ownOther
“As such, Dr. Chaitman would appear to qualify as one of ordinary skill in the art under Patent Owner’s proposed definition. Given Patent Owner’s focus on “specialized engineering skills necessary for the design, configuration, and operation of portable computing devices,” however, we note that we consider the weight of his, or any other expert’s opinions, in light of the strengths and weaknesses of their background. We further note that the research and development of medical devices is often the work of a multidisciplinary team, and courts and tribunals have frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., No. 10-CV-1835 JAP TJB, 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary” Ex. 2001 ¶¶ 52–53 (emphasis added).9 Indeed, considering that the claims of the ’941 patent relate to, e.g., “method[s] of cardiac monitoring” to “confirm a presence of the arrhythmia,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. Ex. 1001, 17:1–18. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial. C. Claim Construction” slip op. at 25
- Expert testimonyPetitioner expert creditedOther
“cardiac arrhythmia as opposed some other heart condition. Id. at 31–32. In this respect Patent Owner’s declarant, Dr. Efimov, testifies that Shmueli makes no attempt to define “irregular heart condition” with any specificity, and “one can only speculate” as to its meaning because “numerous conditions can be considered heart irregularities: normal autonomic nervous system control, autonomic dysfunction, heart failure, ischemia, myocardial infarction, heart block, etc.” Ex. 2001 ¶ 69. At this stage of the proceeding, however, we credit Dr. Chaitman’s testimony that Shmueli discloses “both detecting the ‘irregular heart condition’ based on PPG data and confirming the diagnosis with an ECG measurement.” Ex. 1003 ¶ 54 (citing Ex. 1004, Abstract, Fig. 8; 8:23–28). And although Shmueli “offers an expansive definition of the ‘irregular heart condition,’” one of ordinary skill in the art would have understood this term as referring to arrhythmia, which is “one of the most obvious (if not the most obvious) types of ‘irregular heart condition[s]’ that can be determined using PPG and ECG data.” Id. Considering the present record, Petitioner has established sufficiently that one of ordinary skill in the art would have understood Shmueli’s use of “irregular heart condition” as referring to—or at a minimum, encompassing—arrhythmia, and, thus, disclosing the detection of arrhythmia. See Pet. 13–14 (citing, e.g., Ex. 1003 ¶ 54).” slip op. at 37
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,638,941 - Apple, Inc. v. Alivecor, Inc.InstitutedPTAB · Dec 8, 2021 · IPR2021-00971 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, (“Trial Practice Guide”).6 We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. Upon consideration of these factors, we decline to exercise our discretion to deny the Petition. A. Whether the Court Granted a Stay or Evidence Exists That One May Be Granted if a Proceeding is Instituted” slip op. at 10
- Skill levelSkill level board ownOther
“skill in the art under Patent Owner’s proposed definition. Given Patent Owner’s focus on “specialized engineering skills necessary for the design, configuration, and operation of portable computing devices,” however, we consider the weight of his, or any other expert’s opinions, in light of the strengths and weaknesses of their background. We further note that the research and development of medical devices is often the work of a multidisciplinary team, and courts and tribunals have frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary.” Ex. 2001 ¶¶ 52–53 (emphasis added).10 Indeed, considering that the ’731 patent “relates to methods and systems for managing health and disease such as cardiac diseases including arrhythmia and atrial fibrillation,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage of the proceeding, no term requires construction. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The parties are, of course, welcome to address the meaning of any relevant claim term at trial. D. Ground 1: Obviousness over Shmueli” slip op. at 29
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At this stage of the proceeding, however, we credit Dr. Chaitman’s testimony that, “Shmueli discloses both detecting the ‘irregular heart condition’ based on PPG data and confirming the diagnosis with an ECG measurement.” Ex. 1003 ¶ 48 (citing Ex. 1004, Abstract, Fig. 8; 8:23–28). And although Shmueli “offers an expansive definition of ‘irregular heart condition,’” one of ordinary skill in the art would have understood this term as referring to arrhythmia, “which is one of the most obvious (if not the most obvious) types of ‘irregular heart condition[s]’ that can be determined using PPG and ECG data.” Id. (citing, Ex. 1016, 6081; Ex. 1020, Abstract, 44:29– 32; Ex. 1011, Abstract; Ex. 1023, 2; Ex. 1047, 320–321; Ex. 1001, 1:40–42; Ex. 1004, 8:11–13, 15:3–5) (alteration in original). Considering the present record, Petitioner has established sufficiently that one of ordinary skill in the art would have understood Shmueli’s use of “irregular heart condition” as referring to—or at a minimum, encompassing—arrhythmia, and, thus, disclosing the detection of arrhythmia. See Pet. 10–12 (citing, e.g., Ex. 1003 ¶ 48).” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,595,731 - Apple, Inc. v. Alivecor, Inc.InstitutedPTAB · Dec 8, 2021 · IPR2021-00970 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–20 under the asserted obviousness grounds based on Shmueli and Osorio, with Hu for claims 7–9 and 17–19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and merely argues that Petitioner does not rely on Hu to correct the alleged deficiencies of Shmueli–Osorio combination of Ground 1. Prelim. Resp. 42– 43. As discussed above, however, we do not find Petitioner’s arguments with respect to Ground 1 deficient for the purposes of institution. Accordingly, on this record, Petitioner has shown sufficiently that one of ordinary skill in the art would have considered at least one claim of the ’499 patent obvious for the reasons set forth in the Petition.” slip op. at 47
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“grounds, arguments, and/or evidence than the ITC Investigation. Although Patent Owner argues that the prior art cited in the Petition has “already entered the ITC case,” that argument was made before Petitioner narrowed the number of prior art references it intended to rely upon, as required by the ITC’s Order Setting Procedural Schedule. Ex. 2006; Ex. 1057. Currently there does not appear to be any overlap in arguments or evidence between the two proceedings. Moreover, we agree with Petitioner that its stipulation mitigates to some degree concerns of duplicative efforts and possibly conflicting decisions between the Board and the ITC. Indeed, Petitioner’s stipulation echoes the one cited in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, which the Board determined weighed “marginally in favor of not exercising discretion to deny institution.” IPR2019-01393, Paper 24 at 16 (PTAB June 16, 2020) (informative). Finally, we agree with Petitioner that this proceeding will likely include claims that are not at issue in the ITC Investigation. We are not persuaded by Patent Owner’s argument that Petitioner has failed to explain why the narrowed set of claims would be substantially different than those challenged in the IPR petition because, based on the ITC’s Order Setting Procedural Schedule, Patent Owner had yet to narrow the number of asserted claims as of the deadline for Petitioner to brief this issue. See Ex. 3001 (email from the Board authorizing the parties to brief discretionary denial issues, setting a deadline of October 25, 2021 for Petitioner to file its” slip op. at 18
- Skill levelSkill level board ownOther
“frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary” Ex. 2001 ¶ ¶ 51–52 (emphasis added). Indeed, considering that the ’499 patent “relates to methods and systems for managing health and disease such as cardiac diseases including arrhythmia and atrial fibrillation,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Patent Owner notes that claim terms “heart rate sensor” and those relating to “alert” are at issue in the related ITC Investigation but neither party proposes any construction here. See Prelim. Resp. 29 (citing Ex. 2009). At this stage of the instant proceeding no term requires construction. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The parties are, of course, welcome to address the meaning of any relevant claim term at trial. D. Ground 1: Obviousness over Shmueli and Osorio” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,572,499 - Microsoft Corporation v. Litl, LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-01011 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–36, and the Board’s rules bar institution on disclaimed claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“November 22, 2021, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–36 of the ’957 patent. Ex. 2008. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–36. III. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the challenged claims of the ʼ957 patent; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 8,577,957 - Cohesity Inc. v. Commvault Systems, IncInstitutedPTAB · Nov 24, 2021 · IPR2021-00935 · APJ David Cotta · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 7, 9–11, and 13 because Petitioner showed a reasonable likelihood that at least one challenged claim is obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless 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.” We have reviewed the arguments and evidence of record. Based on the preliminary record, we find that Petitioner has established a reasonable likelihood that at least 1 of the challenged claims is unpatentable based on the grounds advanced in the Petition. Thus, for reasons explained below, we institute inter partes review of claims 1–3, 6, 7, 9–11, and 13 of the ’335 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Preliminary Response, Patent Owner does not oppose Petitioner’s proposal, nor does it offer a proposal of its own. See generally Prelim. Resp. Notably, Patent Owner’s declarant, Dr. Jones, accepts Petitioner’s definition of the POSA. Ex. 2002 ¶ 20 (“For purposes of this declaration, I accept Dr. Zadok’s proposed qualifications of a [POSA].”). Petitioner’s definition of the POSA is consistent with the specification of the ’335 patent and the prior art currently of record. Accordingly, we adopt it for purposes of this Decision. 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”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose a particular construction for any claim term. Pet. 9; see Prelim. Resp. In the course of our discussion, we highlight several claim construction issues that the parties may wish to address. However, at this stage in the proceeding, we determine that no explicit construction of any claim term is necessary to resolve the issues necessary to determine whether to institute review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner shows, based on this preliminary record, where each of the 16 limitations of the challenged claims is taught or suggested by Kahn. Pet. 16–61. Petitioner’s assertions above are backed by the cited prior art and by the testimony of its declarant, Dr. Zadok. Id.; see also Ex. 1003 ¶¶ 101–209. On this preliminary record, we determine that Petitioner’s arguments and evidence are sufficient for purposes of institution. We focus our discussion on the elements of the challenged claims that Patent Owner contends are not disclosed or suggested by Kahn.” slip op. at 16
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,762,335 - Cohesity Inc. v. Commvault Systems, Inc.InstitutedPTAB · Nov 24, 2021 · IPR2021-00934 · APJ Karl D Easthom · IPR · Institution
Instituted IPR of claims 1, 4, 8, and 15 based on obviousness over Chefalas and Tivoli Redbook.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review (“IPR”). See 35 U.S.C. § 314(b) (2018). Under 35 U.S.C. § 314(a), the Board may not authorize an inter partes review unless the information in the Petition and the Preliminary Response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims, claims 1, 4, 8, and 15 of the ’671 patent, on the sole ground of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Relying on the testimony of Dr. Zadok, Petitioner contends that [a] person having ordinary skill in the art (PHOSITA) at the time of the ’671 Patent would have been a person having at least a Bachelor’s Degree in an Engineering discipline such as Electrical, Computer, or Software Engineering, or a Bachelor’s Degree in Computer Science, Information Systems, or equivalent degree, and at least two years of relevant experience in the research, design, development and/or administration of data storage systems, with additional education substituting for less experience and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 89–90). The Preliminary Response does not address Petitioner’s proposed level of skill. The present record, including the ’671 patent specification and prior art, supports Petitioner’s proposed level of ordinary skill in the art, and we adopt it, at least for purposes of institution. See 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” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). C.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this preliminary record and for purposes of institution, no claim terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. at 33–34 (emphasis by Petitioner) (quoting Ex. 1005, 59). This passage and others noted below appear to describe transmitting metadata generated at the client to store at the server database.10 The Petition also explains that a person of ordinary skill in the art “would be motivated to update the metadata” in order to locate the data objects during a “disaster recovery,” otherwise “the backup system would be unable to locate the proper data in order to perform the restoration, rendering the secondary copies useless.” 10 This passage also appears to disclose copying “metadata from this client node.” Similarly, Tivoli Redbook describes “two sessions” between “[t]he IBM Tivoli Storage Manager server and client node . . . : one to move metadata and the other to move data.” Ex. 1005, 59 (emphasis added). During trial, the parties will have the opportunity to address any difference between moving or storing metadata from the client, as described by Tivoli Redbook, and copying metadata, as claimed. Id. at 34–35 (emphasis added) (citing Ex. 1003 ¶¶ 141–142). Petitioner applies this updating motivation to copying, and the parties agree that copying includes updating. See Pet. 43–44; Ex. 2002 ¶ 41 (“‘Updating,’ in some circumstances, can be performed by ‘copying’ but is not limited to being performed by ‘copying.’); Prelim. Resp. 21 (quoting Ex. 2002 ¶ 41). Similarly, Tivoli Redbook states that during journal-based backup “[t]he backup-archive client, as always, still sends data (files) to the IBM Tivoli Storage Manager server and, as has always been the case, the IBM Tivoli Storage Manager server populates the IBM Tivoli Storage Manager database with the file details and location.” Ex. 1005, 113 (emphasis added); see Pet. 34 (quoting same; citing Ex. 1003 ¶¶ 138–140). Such populating of “file details and location” further suggests for institution purposes copying metadata associated with the file details at the second metabase, as Petitioner’s comparison to Chefalas’s Figure 5 and other metadata also suggests. See Pet. 45–46. And “[i]n all cases, ‘[w]hen the file or object has been committed to a storage pool device, the IBM Tivoli Storage Manager database is updated to keep track of its location in the database Tracking section.’” Id. at 34 (quoting Ex. 1005, 59) (emphasis omitted). On this preliminary record, Tivoli Redbook discloses updating metadata, and at least suggests copying metadata, as Petitioner argues. See Pet. 34–36 (updating), 43–48 (copying).” slip op. at 36
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,725,671 - SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 4, 2021 · IPR2021-00821 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” As discussed below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“reasonable likelihood of showing any of challenged claims 1–9, 15–22, and 24–27 would have been obvious over the asserted prior art. Independent claims 1, 26 and 27 recite “wherein the graphical user interface comprises at least a plurality of views of digital media content.” Ex. 1001, 47:58–59, 50:66–67, 51:41–52:1. The independent claims further require transitioning “between the plurality of views.” Id. at 47:60, 51:1, 52:4–5. For all of its asserted grounds, Petitioner asserts that the prior art teaches a plurality of views because “[t]he Shimura-Tsuji Computer can orient the displayed content in either a normal view in the laptop mode or an inverted view in the easel mode based on the outputs of the rotation angle and gravity sensors.” Pet. 50; see id. at 82, 84. Petitioner further asserts that in its proffered combination, “image files . . . would be displayed in either a normal view in the laptop mode or an inverted view in the easel mode, thereby disclosing ‘the graphical user interface comprising at least a plurality of views of digital media content.’” Id. at 50–51; see id. at 82, 84. Similarly, Petitioner explains that its asserted prior-art combination teaches transitioning between views because “[w]hen a user configures the Shimura-Tsuji-Aldrich Computing System between the laptop and easel modes, the displayed content . . . would ‘transition between the plurality of views [normal and inverted views] in response.” Id. at 51. In short, Petitioner relies only on different orientations of the same displayed content to meet the claimed plurality of views. Thus, on the current record, Petitioner has not made a sufficient showing that the asserted combination of Shimura, Tsuji and Aldrich teach or suggest the claimed plurality of views of digital media content and transitioning between those views, as required in all independent challenged claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“As Patent Owner explains, the ’888 patent discusses views extensively. See Prelim. Resp. 38–39 (providing numerous citations to the ’888 patent). In particular, the ’888 patent describes many examples of views that each organize content in a different way. See, e.g., Ex. 1001, Figs. 5 (album view), 7A (single album view), 8 (time view), 16 (a view including cards); see also id. at 21:35–23:58 (describing the ’888 patent’s figures). We agree with Patent Owner that, when discussing views, the ’888 patent consistently refers to different ways of organizing content. See Prelim. Resp. 35–44; see also, e.g., Ex. 1001, 21:14–15 (explaining that “[e]ach view may offer the user particular interaction options, features and benefits”), 21:16–19 (time view organizing content chronologically), 21:19-22 (album view organizing content by album), 22:59-64 (single album view showing previews of photographs). But, as Patent Owner notes, “[t]he specification never describes two orientations of the same organization of displayed content as different ‘views.’” Prelim. Resp. 37. Instead, the ’888 patent separately addresses the display’s “orientation,” which, according to the specification, is achieved simply by rotating the display. Ex. 1001, 10:27–30 (“the plurality of orientations comprises a first orientation relative to the longitudinal axis and a second orientation relative to the longitudinal axis,”), 10:46–49 “(the second orientation is 90 degrees relative to the first orientation, and . . . the third orientation is 180 degrees relative to the first orientation”), 10:57–11:8 (characterizing the display’s “orientation” as a “degree of rotation”). The ’888 patent also expressly distinguishes between displayed content and its orientation in describing that “display content and/or display orientation of the portable computer may vary when the portable computer is configured from the laptop mode into the easel mode.” Id. at 37:6–9. The ’888 patent, however, does not refer to merely changing the visual display’s orientation as changing views. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Philips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). Consistent with the ’888 patent’s specification, for purposes of this Decision, we construe “a plurality of views of digital media content” as referring to a plurality of ways of organizing visual representations of computer content. The recitation is distinct from merely changing the display’s orientation.” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,612,888 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 2, 2021 · IPR2021-00800 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on all grounds because the Petition’s deficient, unclear arguments did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
- BurdenDenied
“Although it might be possible for us to guess at the support Petitioner intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
NonePatents in suitUS 10,289,154 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Oct 21, 2021 · IPR2021-00822 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show that Shimura and the other references taught or suggested the required frame mode in claims 1–16 and 18–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” As discussed below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Petitioner proposes a claim construction for “content mode,” as well as several related terms, i.e., “first content mode,” “second content mode,” and “mode(s) of content.” Pet. 16–18. We determine we need not explicitly construe those terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Figure 26 and the accompanying text characterize frame mode as having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle 134, similar to easel mode’s inverted “V.” See id. at 16:6–13.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“reasonable likelihood of showing the asserted prior art would have rendered obvious the subject matter of challenged claims 1–16 and 18–22. Independent claims 1, 10, and 18 require a “frame mode in which the main display component is oriented towards the operator, the base contacts a substantially horizontal surface, and the keyboard faces the substantially horizontal surface.” Ex. 1001, 17:47–51, 18:66–19:2, 20:27–30, Certificate of Correction. For all of its asserted grounds, Petitioner relies on Shimura’s Figure 4 for teaching the claimed “frame mode.” Pet. 57, 87, 102. We agree with Patent Owner that Shimura’s Figure 4 does not disclose or suggest a frame mode. See Prelim. Resp. 27–32.” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,624,844
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.