- PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.InstitutedPTAB · Apr 24, 2024 · IPR2024-00178 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–10, 14–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Carr–Almy obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design.” Pet. 20 (citing Ex. 1002 ¶ 51). Petitioner also asserts that the number of years of experience could be higher or lower given the level of education and vice versa. Id. (citing Ex. 1002 ¶ 51).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On the current record, we preliminarily interpret “electrical cables” as “wiring that conducts current or signals.” The parties are encouraged to present relevant intrinsic and extrinsic evidence regarding the meaning of this term and whether the preamble should be construed as limiting. This meaning is consistent with the ’291 patent’s description of cable hangers used to support “electrical cables [that] extend from a power or signal source to a location of application” in solar, mining, and electrical industries. Ex. 1001, 1:18–22 (emphasis added). The electrical cables are DC wires that attach to solar panels, AC cables that power motors to rotate solar panels, and category five cables for control wiring. Id. at 1:22–51. The claims recite “electrical cables” not “electrical power cables.” Ex. 1001, 10:24–13:7. We do not limit “electrical cables” to particular types of cables, e.g., AC cables or DC cables, absent a lexicographic definition or a disclaimer in the specification, neither of which are asserted by either party in this proceeding. See Phillips, 415 F.3d at 1316.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“artisan would have modified Almy’s system by replacing wire loops 204B with Caveney’s cable supports that attach to building structures and frames using fasteners as discussed in Section II.D.2. supra, rather than messenger wires extending from solar panels. As discussed in Section II.D. supra for Ground 1, Caveney’s cable hangers are secured to building structures and frames by threaded rod fasteners. On this record, we are not persuaded that the hanger plates 40 and clamps 34 that fasten Caveney’s cable hangers to building structures and brackets using apertures 46, 48 and fasteners would secure Caveney’s cable hangers to Almy’s messenger wire, or that a skilled artisan would have been motivated to modify these structures of Caveney to attach to, and be disposed along, Almy’s messenger wire in order to replace Almy’s closed wire loops 204B with Caveney’s open cable supports 42, 44. Dr. Beik testifies that “Caveney is directed at a multi-tiered cable hanger that can be adapted for attaching to a variety of structures or support surfaces, including messenger wires,” but he supports this assertion by citing Caveney’s disclosure that cable support system 30 is secured to any fastener or structure such as a threaded rod, different brackets, a joist, a ceiling, or a wall. Ex. 1002 ¶ 76 (citing Ex. 1003, 3:3–9). On the current record, we find that the threaded rods secure cable support system 30 to the structures. See Ex. 1003, 2:65–3:1, 3:21–28, 5:63–67, 6:12–15, Figs. 1–7, 20–22. We find that Caveney’s cable supports are designed to attach to fixed, rigid structures such as brackets, joists, ceilings, and walls in a building using threaded rods with hanger plates 40 and brackets 34 that have apertures 46, 48 to receive threaded rod fasteners that secure the cable hangers to building structures. Id. at 3:1–28, 5:63–67, Figs. 1–7, 10–13, 20–22. We are not persuaded on this record that the threaded rod fasteners teach or suggest messenger wires. d. Conclusion On this record, we determine Petitioner has not shown sufficiently that a skilled artisan would have been motivated to combine the teachings of Caveney and Almy as asserted by Petitioner to render claim 14 unpatentable.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,349,291 - PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - PTAB · Feb 9, 2022 · IPR2021-01298 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1, 2, 6–9, 17–20, 22, 23, 25, and 30 on all asserted grounds; the obviousness showing was sufficient for every challenged claim except claim 30.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner also identifies Netflix Streaming Services, Inc. as a real party-in-interest. Pet. 76. 2 After the parties’ briefing, the U.S. Court of Appeals for the Federal Circuit ordered the Eastern District of Texas to transfer this case to the Northern District of California. In re Netflix, Inc., No. 2022-110, slip op., 2022 WL 167470 (Fed. Cir. Jan. 19, 2022). Consequently, we need not address Patent Owner’s arguments for discretionary denial under the Fintiv and Netflix, Inc. v. CA, Inc., 3:21-cv-3649 (N.D. Cal.). Pet. 76; Paper 6 (Patent Owner Mandatory Notices), 1.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. The Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to: (1) “a bachelor’s degree in computer science, electrical engineering, or [a] similar field” and “three years of experience in networked communication devices,” or (2) “a master’s degree in electrical engineering, computer science, or a similar field with an emphasis in networked communication devices.” Pet. 14 (citing Ex. 1003 ¶¶ 49–51). At this stage, Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’938 patent and the asserted prior art. This definition is also supported by the testimony of Mr. Gray. See Ex. 1003 ¶¶ 49–51. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We address these claim construction issues to provide guidance to the parties for the upcoming trial. At this stage, it is not necessary to address the construction of any other claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). During the trial, the parties should directly address any claim construction adopted in this Decision if the party contends we should not adopt that construction in the final written decision. 1. User Configuration Information (All Claims) Petitioner contends the term “user configuration information” “may be satisfied by (but is not necessarily limited to) any of the following, either individually or in the aggregate: information pertaining to (a) device configuration, (b) operational preferences specific to the device user, or (c) various use settings including connectivity and/or use of available resources.” Pet. 15–16. Petitioner asserts that the Specification describes this term “in broad strokes and general language” using several examples. Id. (citing Ex. 1001, 7:56–8:9, 14:56–15:7). At this stage, Patent Owner does not take a position on the meaning of this term. See Prelim. Resp. 36. The Specification uses the term “user configuration information” to” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,911,938 - PTAB · Jan 20, 2022 · IPR2021-01247 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–30; Perry showed a reasonable likelihood of unpatentability for at least one claim, while the Perry combinations with Bellini and/or Harmony lacked sufficient support for motivation to combine.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s arguments that Perry is cumulative of the prior art before the Examiner are inconsistent with its further arguments that Perry fails to satisfy not only limitation [1a-2], but also elements of the preamble [1pre], limitation [1a-1], limitation [1b], limitation [1c], and limitation [1e]—almost all of claim 1. Further, as evidenced by our analysis below, Petitioner has sufficiently shown that Perry teaches or at least reasonably suggests limitation [1a-2]. As such, on this record, Perry is not substantially the same as Peterson and we are not appraised of sufficient overlap between Perry and Peterson to warrant discretionary denial under 35 U.S.C. § 325(d).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“35 U.S.C. § 314(a) to deny institution even though the statutory deadline for a final determination in this proceeding would fall before the projected trial date in the parties’ district-court litigation. Prelim. Resp. 32–37 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 5–6 (PTAB Mar. 20, 2020)). Notwithstanding that timing, Patent Owner contends all six Fintiv factors favor discretionary denial or are neutral (Prelim. Resp. 32–37), while Petitioner contends all six Fintiv factors weigh against discretionary denial (Pet. 73–76).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). the invention would have had “at least a Bachelor’s degree in an academic area emphasizing operations or supply chain management, or a similar discipline, and at least five years of experience in the field working with supply chains.” Pet. 6 (citing Ex. 1003 ¶¶ 18–19). Patent Owner “accepts” Petitioner’s suggestion for the purposes of its Preliminary Response. Prelim. Resp. 14.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’383 patent. Accordingly, we institute inter partes review.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,574,383
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.