- PTAB · Dec 21, 2022 · IPR2022-01088 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–4, 6–15, and 17–21 on all petitioned grounds after finding a reasonable likelihood that Brochure and Blunt rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’771 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner contends that “no terms need construction and the plain and ordinary meaning of each term can be applied.” Pet. 4 (citing Phillips, 415 F.3d at 1312–13). On the present record at this stage of the proceeding, we need not construe any claim terms expressly because the meaning of the terms is not in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s reel with Blunt’s reel 34" to . . . replenish the supply of cable in Brochure’s reel when it is exhausted in an environmentally friendly way.” Pet. 27 (citing Ex. 1002 ¶¶ 51–56; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 28 (citing Ex. 1002 ¶ 53). We have reviewed Petitioner’s detailed arguments challenging claims 1–4, 6–15, and 17–21 and the evidence on which Petitioner relies (see Pet. 16–83), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–4, 6–15, and 17–21, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,906,771 - Realtek Semiconductor Corp. v. Future Link Systems, LLCInstitution deniedPTAB · Dec 19, 2022 · IPR2022-01071 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims, 1–19.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“II. ANALYSIS The Board will not institute an inter partes review when a Patent Owner has disclaimed all claims challenged in the Petition. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Electric Co. v. United Techs. Co. et al., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential); see also 35 U.S.C. § 253(a) (providing that a patentee may disclaim); 37 CFR § 1.321(a) (requirements for disclaimer). Our review of the record shows that Patent Owner has now filed a disclaimer meeting the requirements of § 1.321(a) and that all of the challenged claims have therefore been disclaimed. For that reason, the Petition is denied and we do not institute an inter partes review.” slip op. at 2
NonePatents in suitUS 8,099,614 - PTAB · Dec 19, 2022 · IPR2022-01087 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–8 and 10–19 on all grounds, finding a reasonable likelihood that claims 1–8 and 10–19 would be obvious over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Eldering’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶ 15). At this stage of the proceeding and on the current record, we find that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’016 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that one of ordinary skill in the art would have been motivated to “modify Brochure’s cable reel with Blunt’s reel structure or substitute Brochure’s cable reel with Blunt’s reel 34" to . . . replenish the supply of cable in the cable reel installed in the Tote bag when it is exhausted in an environmentally friendly way.” Pet. 26 (citing Ex. 1002 ¶¶ 58–63; Ex. 1004 ¶ 107). Additionally, Petitioner asserts that one of ordinary skill in the art “would have expected success in modifying Brochure’s cable reel with the reel structure of Blunt’s reel 34" or substituting Brochure’s cable reel with Blunt’s reel 34" because the modification would merely involve using a known technique to improve similar devices in the same way taught.” Id. at 27 (citing Ex. 1002 ¶ 60). We have reviewed Petitioner’s detailed arguments challenging claims 1–8 and 10–19 and the evidence on which Petitioner relies (see Pet. 17–92), and we find, on the preliminary record before us, that Petitioner has shown sufficiently that the combination of Brochure and Blunt satisfies the elements of claims 1–8 and 10–19, and that one of ordinary skill in the art would have been motivated to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,941,016 - Google LLC v. Parus Holdings, Inc.Institution deniedPTAB · Dec 13, 2022 · IPR2022-01020 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (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). For the reasons set forth below, upon considering the present record, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 8. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Petitioner bases these contentions on declaration testimony from Mr. Lipoff. Id. (referencing Ex. 1002 ¶¶ 40, 85).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the three independent claims include language that indicates that each claim encompasses a set-up stage and a retrieval stage. When construing a claim, we start with the language of the claims themselves. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Claim 1 expressly recites that steps (a) through (h) are completed before step (i) and subsequent steps. Ex. 1001, 14:12–15; see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” (citation omitted)). For claim 16, its preamble recites “[a] method for allowing a phone user to set up and subsequently retrieve information in an audio format from a pre-defined portion of a pre-selected web [site].” Id. at 16:13–15; accord id. at 16:17–62 (affirmatively reciting “pre-defined portion of said pre-selected web site” in multiple steps in the body of the claim); see also Pet. 13 (“Furthermore, a [person having ordinary skill in the art] would have understood that Claim 16’s preamble is similar to element 1(i) of Claim 1.”); Prelim. Resp. 22–23; cf. Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other claim terms Except as provided above, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. 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 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,516,190 - PTAB · Dec 7, 2022 · IPR2022-00946 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–22 on all petition grounds, finding a reasonable likelihood that PPC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Considering the arguments presented in the Petition, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–12 and 14–22 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In addition, Petitioner contends that a POSITA would understand that Brochure in combination with Blunt teaches the “first flange configured to engage the first frame” and the “second flange configured to engage the second frame.” Pet. 42–44 (citing Ex. 1002 ¶¶ 65–75; Ex. 1004 ¶¶ 96–97, Figs. 3, 11; Ex. 1006; Ex. 1001, 10:50–53). Specifically, Petitioner argues that a POSITA would understand that when the separable cable reel disclosed in Blunt is inserted into the bag in Brochure, “the ‘first flange’ is ‘configured to engage’ the ‘first frame’ in the base of the bag and the outer engaged with the ‘first frame.’” Id. at 40. Petitioner reasons that a POSITA would understand that the cable reels of Brochure and Blunt are similarly configured when the cable reel in Blunt is assembled. Pet. 40 (citing Ex. 1002 ¶ 68). According to Petitioner, a POSITA would know that when the Blunt cable reel is inserted into the Brochure bag, the outer side of the flange first inserted into the bag (i.e., the “first flange”) is configured to engage with the first frame at the base of the bag in Brochure. Id. Petitioner explains the same is true for the outer side of the second flange, which is the flange facing out of the bag cover. Id. At this stage, we note that the preliminary evidence supports Petitioner’s contentions that Blunt teaches reel 34", flange 42", core 36", and separate flange 40". Ex. 1004 ¶ 96, Fig. 11. Further, Dr. Eldering’s unrebutted testimony supports Petitioner’s position that a POSITA would have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34", within Brochure’s cable reel apparatus. See Ex. 1002 ¶ 57. Dr. Eldering also testifies a POSITA would understand the environmentally friendly advantages of replenishing the supply of cable in the cable reel installed in the Tote bag. Id. ¶ 53 (citing Ex. 1004 ¶ 107). Upon review of the preliminary record and based on the evidence and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes “the plain meaning of each claim term can be applied.” Pet. 5. For purposes of this Decision, we do not expressly construe any terms. 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)).” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,988,342 - PTAB · Dec 7, 2022 · IPR2022-00947 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–8 on all petitioned grounds; the Board found a reasonable likelihood of prevailing on at least claim 1 over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For reasons provided below, we determine, on behalf of the Director (see 37 C.F.R. § 42.4(a)), that the Petition demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). We therefore institute the petitioned inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’471 patent “would have at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4; Ex. 1002 ¶ 15. At this stage of the proceeding, we find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’471 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms need construction and the plain meaning can be applied.” Pet. 5. Petitioner asserts claim 4’s “means for releasably coupling” limitation (Ex. 1001, 12:21–27, pg. 20 (Cert. of Correction)) is a means-plus-function limitation under 35 U.S.C. § 112(f), and Petitioner provides a corresponding construction. See Pet. 5–6. For reasons provided below, we determine Petitioner’s challenge to claim 1 provides a sufficient basis to justify institution of review regardless of claim 4, so we do not reach this claim construction issue at the present time. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Based on our review of the record at this preliminary stage, we determine no explicit construction of any claim term is needed to decide whether to institute review. 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)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34ʹʹ, within Brochure’s cable reel apparatus. See Pet. 28–34, 36–38, 49–52. This would have been done, according to Petitioner, in order to permit the user to “replenish the supply of cable in Brochure’s cable reel when it is exhausted in an environmentally friendly way.” Id. at 28 (emphasis added); Ex. 1002 ¶ 57. Petitioner points out that Brochure describes its system as being “Environmentally-Friendly,” and alleges that Blunt similarly describes how its two-component reel 34ʹʹ can “be replenished with a new supply of cable when the cable supply in the reel is exhausted such that the reel would be reused in ‘an environmentally friendly manner.’” Pet. 28–29 (quoting Ex. 1006; Ex. 1004 ¶ 107) (citing Ex. 1004 ¶¶ 19, 73, 89); Ex. 1002 ¶ 58. Specifically, according to Petitioner, using Blunt’s replenishable two-component reel in Brochure “would be environmentally friendly because it would save cost and reduce waste since the entire cable reel does not have to be disposed.” Pet. 29 (citing Ex. 1004 ¶ 19; Ex. 1005, 1:21–25, 4:33–57, Fig. 6); Ex. 1002 ¶ 58. Petitioner also asserts this modification could have been achieved with a reasonable expectation of success, given various similarities between Brochure’s and Blunt’s rotatable mounting of a cable reel, and related teachings in those and other prior art references. See Pet. 29–32; Ex. 1002 ¶¶ 59–61. Petitioner further provides illustrations of how a person of ordinary skill in the art might have implemented this combination. See Pet. 32–34; Ex. 1002 ¶ 62. Upon review of the foregoing, we determine Petitioner’s contentions regarding the motivations that would have led a person of ordinary skill in the art to use, with a reasonable expectation of success, Blunt’s two-component cable reel structure within Brochure’s cable dispensing apparatus, are sufficiently articulated and supported by the evidence of record to justify institution of review.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,001,471 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Dec 6, 2022 · IPR2022-00950 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command.” Pet. 10. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also note that, although the specific language of Petitioner’s proposal differs somewhat from the expressions of the level of ordinary skill that we adopted in the related proceedings to determine whether to institute review, they are substantially equivalent. See Microsoft, IPR2022-00137, Paper 9 at 9–10; Google, IPR2022-00279, Paper 7 at 10–11.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction,” nor does Patent Owner propose any express construction of any claim term. See Pet. 10. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“2. Combination of Brown and Shuster Patent Owner disputes Petitioner’s reasoning for combining Brown and Shuster (together with Myers) as “based solely on hindsight.” Prelim. Resp. 64 (citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998)). We agree with this assessment because, as Patent Owner observes, “Brown discloses a web-based [interactive voice response] system with no inherent search capability and [that is] used to navigate Internet sites,” while Shuster “discloses a system for searching a wide area network and then displaying optimized search results such that users can find information easily and quickly.” Id. at 61 (emphases omitted). This difference, between navigation and searching, is meaningful, as Patent Owner illustrates with what it calls “a more realistic scenario.” See id. at 62.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,721,705 - Resmed, Inc. v. New York UniversityInstitutedPTAB · Dec 5, 2022 · IPR2022-00989 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood of success on obviousness over Sullivan995 and Sullivan460.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b) is unavailing. Rule 42.104(b) requires a petitioner to state in its petition “[h]ow the challenged claim is to be construed” and “specify where each element of the claim is found in the prior art.” 37 C.F.R. §§ 42.104(b)(3), (b)(4). The Petition states “[t]he Board construes the claims ‘using the same claim construction standard that would be used’ in district courts.” Pet. 20. We disagree that Rule 42.104(b) or the CTPG requires Petitioner to make any specific statement if it takes the position that no express construction of claim terms is required. Rather, the CTPG states that “a petitioner may include a statement that the claim terms require no express construction.” CTPG 44.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We use a two-part framework to analyze a request to exercise discretion to deny institution under § 325(d). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, Paper 6 at 8. Second, if either condition of the first part of the framework is satisfied, then we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. In applying this framework, we refer to the non-exclusive factors delineated in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). These factors are: a) the similarities and material differences between the asserted art and the prior art involved during examination; b) the cumulative nature of asserted art and the prior art evaluated during examination; c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; d) the extent of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Id. at 17–18.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “in 2003 would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 9. We find, on the current record, that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner propose no express construction for any claim term, at least with regard to the alleged obviousness grounds of unpatentability. See Pet. 20. In regard to the alleged anticipation grounds, Petitioner contends “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep,” and asserts this is an “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court. Id. at 68, 70. Patent Owner proposes no express construction of any claim term and states “no claim terms are in controversy.” Prelim. Resp. 10. In light of our determinations below, we find that an express construction of any claim term is not necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Dec 2, 2022 · IPR2022-00949 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted Brown and Neal combinations, including the Shuster ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill in the Art The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. See Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). POSITA “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command or equivalent field,” wherein “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“search for a product that is offered by multiple suppliers, a hierarchy of cascading searchable data sets in a database system is searched until a match is found. Pet. 32; see also Ex. 1008, Abstract, 5:58–60, 7:9–12. And, as Patent Owner points out, Neal’s system manager configures the predetermined hierarchy of data sets in the database system in which to search. Prelim. Resp. 33; see Ex. 1008, 5:58–64. We are persuaded by Patent Owner’s contention that a POSITA would not have been motivated to combine Brown’s system in which the list of choices of full title descriptions is refined for user selection until the user converges on one choice (see Ex. 1007, 6:41–50), with “a database system such as Neal in which the realm of possible results is already predefined by a system manager.” Prelim. Resp. 34–35. As Patent Owner points out, “[Petitioner]’s basis for the Neal combination hinges on the Brown exception condition where multiple hyperlink URLs are retrieved due to an ambiguous speech command.” Id. at 35–36. But “[w]ith no knowledge of ‘desired information,’ Neal’s sequential search methodology is meaningless when applied to Brown’s set of ambiguous hyperlink URLs.” Id. at 36. Petitioner’s contention that a POSITA would have been motivated to modify the system of Brown with the teachings of Neal does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, Petitioner’s obviousness position does not sufficiently explain why a person which the list of choices of full title descriptions is refined for user selection until there is no ambiguity (see Ex. 1007, 6:41–50), using Neal’s search of a favored supplier in a hierarchy of cascading searchable data sets. See Ex. 1008, Abstract, 5:58–60, 7:9–12. Indeed, Petitioner does not direct us to persuasive evidence that applying Brown’s IVR system using Neal’s sequential searching technique (Pet. 36–37) would have been expected to provide any advantage, outside the teachings of the ’402 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Yarowsky’s declaration testimony to support its contention that one of ordinary skill in the art would have combined the teachings of Brown and Neal such that “[i]f the data supplier (e.g., a website in Brown) does not have the desired information, then the search continues to the second preferred supplier of information, and so on until a match is found or all the websites have been visited.” Pet. 36–37. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See In re Magnum Oil Tools, 829 F.3d at 1380. Instead, we conclude that Petitioner uses improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,930,276
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.