- PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). E. Alleged Obviousness” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,676,255 - PTAB · Jul 11, 2022 · IPR2022-00324 · APJ Russell E Cass · IPR · Institution
Instituted IPR of claims 1–7, 9, and 11–16 on all grounds; Samsung showed a reasonable likelihood of proving at least one challenged claim unpatentable, and discretionary denial was unwarranted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In weighing factor two, we follow the Interim Fintiv Guidance, which directs us to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides,” which is 24.2 months. Interim Fintiv Guidance 8–9. Applying this time period, the expected trial date would be in November 2023, which is several months later than the July 2023 due date for our final written decision in this case. We do not agree with Patent Owner that the median time-to-trial statistics are not relevant here because the parties can only move the trial date upon a showing of “good cause.” See PO Supp. Br. 1 (citing Ex. 2003, 1, 5). We also do not agree that the speculative possibility that the district court might grant summary judgment weighs in favor of exercising discretion to deny institution, particularly because Patent Owner has not provided any reason why summary judgment is likely in this case. See id. at 2. Consequently, we find that this factor weighs against exercising discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed
“Based on the present record, Petitioner has sufficiently shown that the preambles of independent claims 1, 11, and 14 are non-limiting. The preamble of claim 1 recites a “headset,” but the “headset” is not referenced in the body of that claim, which appears to recite a structurally complete invention. Similarly, the preambles of claims 11 and 14 recite an “earpiece,” but the body of those claims do not reference the “earpiece” and appear to recite a structurally complete invention. Additionally, the Examiner determined during prosecution that the terms “a headset” and “earpiece” recited in precursors to the independent claims “ha[ve] not been given patentable weight” because “the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause,” and the applicant did not dispute this determination. Ex. 1004, 69, 131. Thus, the preamble terms “headset” and “earpiece” appear to be more akin to the intended use of a structurally complete invention recited in the body of the claim than an “essential element” of the claimed invention that should be given patentable weight. However, we question whether Petitioner has sufficiently shown that the preambles of dependent claims 2, 3, and 16 are non-limiting. Each of these claims refers to the preamble in the body of the claim. For example, claim 2, states that the “event” of claim 1 “is a touching of the headset,” claim 3 states that the processor “triggers the event responsive to detecting an abrupt movement of the headset, or a change in location of the headset.” Similarly, claim 16 states that the “event” of claim 15 “is a touching of the earpiece” or “an abrupt movement of the earpiece.” In Arctic Cat, the Federal Circuit distinguished the non-limiting structural language in the preamble from a situation where preamble language “suppl[ies] ‘antecedent basis’ for terms in the body,” and identified this factor as one of “[t]he rules we have articulated about what preamble language reciting structure is limiting.” Arctic Cat, 191 F.3d at 1329. The parties may further address the issue of whether the preambles of the challenged claims are limiting during the trial.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Other than the preambles, the parties do not propose constructions for any other claim terms. Pet. 17; Prelim. Resp. 15. We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,254,591
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.