- Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Dec 20, 2023 · IPR2022-01089 · APJ Barry L Grossman · IPR · Final written decision
Petitioner did not prove claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49
- Skill levelSkill level board ownOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. slip op. at 60
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision
Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41
- Skill levelSkill level board ownDecided for patent owner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - PTAB · Dec 11, 2023 · IPR2023-00996 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR of claims 1–3, 5–8, 10–12, and 18 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’165 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–3, 5–8, 10–12, and 18) of the ’165 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Summary and conclusion Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition. As discussed above, only factor 5 weighs in favor of discretionary denial, factor 1 is neutral, and factors 2, 3, and 4 weigh, in varying degrees, against discretionary denial of institution, with factors 2 and 3 being the most compelling factors. Given that the trial date has already been delayed to just four months prior to the statutory deadline for a Final Written Decision in this case, and that the current proposed scheduling order pushes significant discovery efforts well into 2024, the evidence of record does not favor exercising our discretion to deny institution of this inter partes review.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner states that it “applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 6. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Having considered the record before us at this early stage of the proceeding, and because there is no actual dispute as to the meaning of these or apparently any claim terms, we determine that no express claim construction is necessary for any particular claim term. And, like the parties, for purposes of this Decision we adopt, and where appropriate refer to the District Court’s claim constructions in Niantic. Apart from this, on this early record we determine that we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,991,165 - PTAB · Dec 11, 2023 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 3, 5, 7–12, and 23–26 based on both § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’941 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1, 3, 5, 7–12, and 23–26) of the ’941 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“proposed scheduling order, we determine that the second Fintiv factor weighs against discretionary denial of the Petition.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor degree in computer engineering, computer science, or a similar discipline, and/or two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the specific context of console and gaming or an equivalent level of skill, knowledge, and experience. A POSITA[4] would have at least a general knowledge of online and in-game advertising methods prevalent in the field, as well as at least a general knowledge of 3D rendering and virtual reality. Pet. 10 (citing Ex. 1004 ¶ 43). Patent Owner states that it “applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 6. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“However, Patent Owner does not provide any express argument for why we should adopt of any of those constructions or demonstrate that any of the constructions would be meaningfully different from the plain and ordinary meaning applied by Petitioner.5 Id. at 6–9. Indeed, we note that the constructions largely repeat the claim language with the clarification that what is claimed is computer software. See id. at 6–7 (setting forth district court constructions). Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,846,941 - PTAB · Dec 11, 2023 · IPR2023-00954 · APJ James J Mayberry · IPR · Institution
The Board instituted inter partes review of claims 1 and 3–9 on all three asserted obviousness grounds, finding a reasonable likelihood that claim 1 is unpatentable over Angles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Litigation has moved the trial date to August 5, 2024, or approximately 4 months before the Final Written Decision is due. See Ex. 3002, 5. This proposed date represents a four-month delay in the trial date as compared to the trial date the parties argued discretionary denial in the Petition and Preliminary Response. In consideration of the above discussion, and particularly the latest proposed scheduling order, we determine that the second Fintiv factor weighs against discretionary denial of the Petition.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer engineering, computer science, or a similar discipline, and/or two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the specific context of console and gaming or an equivalent level of skill, knowledge, and experience. Pet. 12. Petitioner adds that a person having ordinary skill in the art “would have at least a general knowledge of online and in-game advertising methods prevalent in the field, as well as at least a general knowledge of 3D rendering and virtual reality.” Id. (referencing Ex. 1004 ¶ 43). Patent Owner “applies Petitioner’s characterization.” Prelim. Resp. 4. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Crane’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner believes that no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 13. Patent Owner does no raise any claim construction issues. Prelim. Resp. 4. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the record before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,458,028 - PTAB · Dec 11, 2023 · IPR2023-00959 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–7, 9–14, 16, 18, and 20–23, finding a reasonable likelihood that claim 1 is unpatentable over Robinson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Instituting an inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons set forth below, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. Factor 1 — Whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted Under the first Fintiv factor, we consider “whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. Both parties indicate that no stay has been requested. Pet. 62; Prelim. Resp. 43. Also, neither party identifies any statements by the district court or other evidence that specifically address a stay of the Litigation pending this proceeding. We decline to speculate based on the record in this case whether the district court would grant a stay of the Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in computer engineering, computer science, or a similar discipline, and/or two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the specific context of console and gaming or an equivalent level of skill, knowledge, and experience. Pet. 9. Petitioner adds that a person having ordinary skill in the art “would have at least a general knowledge of online and in-game advertising methods prevalent in the field, as well as at least a general knowledge of 3D rendering and virtual reality.” Id. (referencing Ex. 1004 ¶¶ 41–44). Patent Owner “applies Petitioner’s characterization.” Prelim. Resp. 5. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Crane’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have considered Patent Owner’s arguments and determine, on the current record, that they do not demonstrate a deficiency in Petitioner’s position. First, there is no requirement that a prior art reference use the same terminology as that used in a claim. Cf. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (stating that “the reference need not satisfy an ipsissimis verbis test,” in an anticipation analysis). Instead, we must inquire whether a person having ordinary skill in the art would have understood, at the time of the invention, that the prior art reference taught or suggested the subject matter at issue. Cf. Celgene Corp. v. Peter, 931 F.3d 1342, 1351 (Fed. Cir. 2019) (“The Board evaluated Dr. Fudin’s opinion and the supporting Mann study and credited his testimony that a person of ordinary skill in the art would have ‘understood the necessity of counseling males, capable of impregnating females, about the risks that attend fetal exposure to a teratogenic drug.’”). Also, we do not agree with Patent Owner that a disclosure that avatars are subject to environmental rules means that Robinson’s virtual thematic environment does not contain virtual thematic environment rules. We understand Petitioner to contend that a person having ordinary skill in the art would have understood from Robinson’s teachings that the avatars of Robinson’s 3D environment move and interact based on rules contained within the 3D environment, such as an environment extended to an online game. See Pet. 45–46. As to Patent Owner’s other arguments, we do not agree, on the current record, that Mr. Crane’s testimony is conclusory or that Patent Owner or the Board was forced to go searching for support for his testimony. Mr. Crane states that “[i]n forming my opinion, I have drawn on my academic background and professional experiences. My opinions herein, however, were formed taking into account the perspective of an ordinarily skilled artisan.” Ex. 1004 ¶ 44; see also id. ¶¶ 5–20 (providing Mr. Crane’s background and qualifications, including reference to his curriculum vitae (Ex. 1005)). Also, Mr. Crane provides background information to the subject matter of the ’724 patent in support of his testimony. See id. ¶¶ 71–86.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,255,724 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01042 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of review for claims 1, 21, 26, and 28 of the ’876 patent because the petitioner’s earlier Iowa declaratory judgment action triggered § 315(a)(1).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherDenied
“The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1). For these reasons, after considering the parties’ evidence and arguments, we determine that § 315(a)(1) bars institution of inter partes review for these proceedings.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)). Here, there is no evidence that Patent Owner filed a claim as a plaintiff against Petitioner in the Northern District of Iowa and that the Iowa DJ action was a counterclaim in opposition to or against such a claim. Petitioner’s argument that Patent Owner should be precluded from arguing that the Iowa DJ action is not a counterclaim is also not persuasive. Pet. 7. Regardless of whether Patent Owner subsequently argued that the Iowa DJ action was a counterclaim (an argument made in the context of a motion of consolidation), subsequent arguments by Patent Owner would not retroactively transform the Iowa DJ action, which was filed before any claim was filed by Patent Owner against Petitioner in that jurisdiction, into a counterclaim. Thus, we find that Petitioner’s Iowa DJ action was a civil action challenging the validity of a claim of a patent. The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1).” slip op. at 9
Discretionary denialPatents in suitUS 11,274,876 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01043 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because the petitioner’s earlier Iowa declaratory judgment action challenging the patents triggered the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. DISCUSSION A. Legal Standards Section 315(a)(1) of 35 U.S.C. states that “[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Section 315(a)(3) states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection [section 315(a)].”” slip op. at 3
- BurdenDecided for patent owner
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)).” slip op. at 9
Discretionary denialPatents in suitUS 10,495,374 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01041 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of IPR because College Products filed a civil action challenging the patents’ validity before filing the petitions, triggering § 315(a)(1).
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“of the Petitions pursuant to § 315(a)(1). In Avigilon, the Board analyzed the ordinary, common meaning of “complaint,” noting the definition of “‘complaint’ as ‘[t]he initial pleading that starts a civil action and states the basis for the court’s jurisdiction, the basis for the plaintiff’s claim, and the demand for relief.’” Id. at 7 (citing Black’s Law Dictionary 323, 1491 (9th ed. 2009)). Petitioner’s Iowa DJ action meets this definition because it was an initial pleading that started a civil action and stated bases for their claims. See Ex. 1017; Ex. 2006. Specifically, the plain language of § 315(a)(1) does not include an exception for Petitioner’s action (filing a declaratory judgment action challenging validity before filing the petitions) and the terms of § 315(a)(1) have ordinary, common meanings, as discussed above. Id. at 8. The Board in Avigilon also disagreed with Avigilon’s assertion that their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)). Here, there is no evidence that Patent Owner filed a claim as a plaintiff against Petitioner in the Northern District of Iowa and that the Iowa DJ action was a counterclaim in opposition to or against such a claim. Petitioner’s argument that Patent Owner should be precluded from arguing that the Iowa DJ action is not a counterclaim is also not persuasive. Pet. 7. Regardless of whether Patent Owner subsequently argued that the Iowa DJ action was a counterclaim (an argument made in the context of a motion of consolidation), subsequent arguments by Patent Owner would not retroactively transform the Iowa DJ action, which was filed before any claim was filed by Patent Owner against Petitioner in that jurisdiction, into a counterclaim. Thus, we find that Petitioner’s Iowa DJ action was a civil action challenging the validity of a claim of a patent. The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1). For these reasons, after considering the parties’ evidence and arguments, we determine that § 315(a)(1) bars institution of inter partes review for these proceedings. III. ORDER In consideration of the foregoing, it is hereby ordered that the Petitions are denied, and no trials are instituted.” slip op. at 10
Discretionary denialPatents in suitUS 9,791,206 - International Business Machines Corporation v. Ebates Performance Marketing, Inc. Dba Rakuten RewardsAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00890 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–20 are unpatentable as obvious: claims 1–5 and 7 over Kumar; claim 6 over Kumar and Afshar; claim 8 over Kumar and Kuure; and claims 9–20 over Kumar with Hoshino or Pan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’968 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“claim 16 are means-plus-function terms and provided, along with the function, the corresponding structure in the specification. Pet. 9. In our Institution Decision, we determined that “[b]ecause the meanings for the terms proposed by Petitioner do not impact our Decision, we need not explicitly construe these terms.” Inst. Dec. 10. For purposes of analysis, and because it is undisputed, for independent claim 16, we rely on Petitioner’s proposed corresponding structure which is a “processor and a module in the communication network that performs the identified function using a signaling protocol such as a session initiation protocol.” Pet. 9 (citing Ex. 1001, 7:51–8:18, 8:36–59, 9:14–36, 9:24–31; Ex. 1002 ¶¶ 68– 71). Apart from this, our determinations in this Decision do not turn on a specific interpretation of these means-plus-function terms and we need not further explicitly construe them.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We acknowledge that Kumar includes an embodiment where the “<switch> tag while executing a voice based application such as VoiceXML is used to initiate a data session while the user is interacting in a voice session.” Id. ¶ 59. And, in doing so “[t]he initiation of a data session may result in termination of a currently active voice session if the device does not support simultaneous voice and data session.” Id. However, the “switch” tag, or command, need not terminate the voice session in the same way with a device that permits simultaneous application sessions. Indeed, Kumar explains “[w]here the device supports simultaneous voice and data, the veGATEWAY opens a synchronization channel between the client and the server for synchronization of the active voice and data channel.” Id. Patent Owner’s declarant, Dr. Almeroth, testifies that “[w]hile Kumar uses the word ‘simultaneous,’ a POSA would know that it is not truly simultaneous. Instead, as the command implies, <switch> is used to toggle between voice, visual and data streams.” Ex. 2003 ¶ 187. We do not agree with Patent Owner’s position, or credit Dr. Almeroth’s testimony that for a device with simultaneous application communication capability “Kumar’s <switch> is used to toggle between voice, visual and data streams.” PO Resp. 68; Ex. 2003 ¶ 187. This is not what Kumar states, or even implies. Rather, Kumar expressly describes that “[t]he <switch> interface maintains the session while a user toggles between the voice and data session.” Ex. 1007 ¶ 71. Above all, Kumar explains that “[t]he <switch> results in a simultaneously active voice and data session if the device provides the capability.” Id. Kumar does not, as asserted by Dr. Almeroth and Patent Owner, state that the “switch” command toggles between voice and data streams, but that “a user toggles” between the voice and data session. Nowhere does Patent Owner or Dr. Almeroth explain why a user, toggling or switching, between using voice or data, must mean that the “switch” command is switching back and forth between an active voice session and an inactive data session or vice versa.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“call sessions in Kumar, a person of ordinary skill in the art would have looked to Afshar’s for a CCE because there are “a finite set of solutions for controlling the call sessions—by integrating the call control functionality into MMGC, or by using a dedicated entity dedicated for call control, such as a CCE.” Id. at 84. Dr. Min testifies that an ordinary skilled artisan “would have had a reasonable expectation of success in integrating Afshar’s CCE into Kumar’s system because Afshar teaches that the CCE communicates with the SIP signaling entity via SIP, and SIP is supported by Kumar’s system as well.” Ex. 1002 ¶ 363. Dr. Min testifies persuasively, that a person of ordinary skill in the art would have been motivated to combine Kumar and Afshar because “Kumar, like Afshar, describes a ‘VoIP call using SIP/RTP’ for an ‘application [] in voice mode.’” Id. ¶ 360 (citing Ex. 1007 ¶ 95). Patent Owner does not dispute Petitioner’s showing that Kumar as combined with Afshar disclose and teach the additional limitations of dependent claim 6. See generally PO Resp. Thus, we need not address the sufficiency of Petitioner’s showing as to the undisputed limitations of claim 6. See In re NuVasive, 841 F.3d at 974. In any event, based on our review, we find that the record fully supports Petitioner’s showing that Afshar’s CCE, as properly combined with Kumar’s MMGC, discloses all the limitations of claim 6. Pet. 83–84. After weighing all relevant factual findings, including the level of ordinary skill in the art, the scope and content of Kumar and Afshar, and any differences between the combined references and the claimed invention, we conclude that Petitioner demonstrates by a preponderance of the evidence that claim 6 of the ’968 patent would have been unpatentable as obvious over Kumar and Afshar under 35 U.S.C. § 103(a).” slip op. at 28
Patent outcomesUS 8,072,968 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,072,968
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.