- PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - PTAB · Mar 2, 2023 · IPR2021-01483 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–18 are unpatentable; the revised motion to amend and both parties’ motions to exclude are denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 10
- 112 supportMotion to amend, deniedDenied
“to . . . introduce new subject matter.” 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii); Lectrosonics, Paper 15 at 6–7. Accordingly, “the Board requires that a motion to amend set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this requirement, Patent Owner must cite “to the original disclosure of the application, as filed, rather than to the patent as issued.” Id. at 8.” slip op. at 56
- ExcludeMotion to exclude, deniedDenied
“insufficiency in its showing that these documents are prior art is a legal determination to be made by the Board, and is not proper for a motion to exclude. Pet. Opp. PO Mot. Excl. 4 (citing Chicago Mercantile Exchange Inc. v. 5th Market, Inc., CBM2014-00114, Paper 35, at 52 (P.T.A.B. Aug. 18, 2015) (“a motion to exclude is not the proper vehicle to challenge the sufficiency of the evidence used to demonstrate that [an item] qualifies as a prior art printed publication . . .. Whether a reference qualifies as a printed publication . . . is a legal conclusion based on underlying factual determinations” and thus “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude”).” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“claims 11, 17, and 18. Resp. 10 n. 2. We determine that Petitioner has shown the limitations of claims 11, 17, and 18 to be taught by the abovementioned portions of Chang and Geeks, and that a person of ordinary skill in the art would have reason to combine the references with a reasonable expectation of success. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 11, 17, and 18 are unpatentable.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 9,848,295 - PTAB · Oct 7, 2022 · IPR2021-00680 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7, 9–11, 14–16, 19, 21, 32–37, 39, 47, and 49–57 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
Nonecites KSR · GrahamPatents in suitUS 10,469,934 - PTAB · Dec 26, 2017 · IPR2017-02201 · APJ Daniel J Galligan · IPR · Order
The Board dismissed the petition and terminated the proceeding as to all parties because the parties had settled their dispute.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“and 37 C.F.R. § 42.72, these sections relate, respectively, to termination of “[a]n inter partes review instituted under this chapter” and to termination of “trial,” which “means a contested case instituted by the Board based upon a petition.” 35 U.S.C. § 317; 37 C.F.R. §§ 42.2, 42.72. This proceeding is in the preliminary stage, and no decision whether to institute a trial has been made. As such, we treat the parties’ request as seeking dismissal of the Petition to thereby terminate the proceeding.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“U.S. Patent No. 6,684,060 B1. Mot. 3–4. The parties represent that “there are no other agreements or understandings, oral or written, between DTS and Avago, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding.” Mot. 3. Under these circumstances, we determine that it is appropriate to dismiss the Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a), 42.74(a). We also determine that it is appropriate to treat the Agreements as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c).” slip op. at 2
NonePatents in suitUS 6,684,060 - PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘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)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173 - PTAB · Sep 24, 2015 · IPR2015-01382 · APJ Michael R Zecher · IPR · Order
The Board granted the renewed joint motion to terminate and terminated the proceeding before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. DISCUSSION On September 18, 2015, the parties filed a Joint Motion to Terminate this proceeding (Paper 9), a copy of the parties’ settlement agreement (Ex. 1009), and a Motion to Seal (Paper 8) that includes a request to treat the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). After reviewing the settlement agreement submitted by the parties, we informed the parties via email correspondence on September 21, 2015, that these papers were insufficient because the settlement agreement was redacted. See 35 U.S.C. § 317(b) (requiring a “true copy” of a settlement agreement be filed in the Office before the termination of an inter partes review); see also APTwater, Inc. v. ThinkVillage- Kerfoot, LLC, Case IPR2014-00132, slip op. at 2 (PTAB June 10, 2014) (Paper 17) (“A redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.”). We instructed the parties to file a non-redacted version of the settlement agreement. On September 21, 2015, the parties complied with our instructions by filing a renewed Joint Motion to Terminate this proceeding (Paper 10), and a true copy of the parties’ settlement agreement (Ex. 1010).1 The renewed Joint Motion to Terminate this proceeding also includes a joint request to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 10, 4–5.” slip op. at 2
NonePatents in suitUS 6,578,086 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795
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.