- 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 - 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 - 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 - 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 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision
The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · Nov 3, 2022 · IPR2022-00922 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 10, 38, and 101 on all asserted grounds, finding a reasonable likelihood that claim 10 is unpatentable over Heller.
RulingsInstitution decision- Parallel petitionsDenied
“This summary reflects that the pair of petitions do not overlap in the claims challenged, but rather overlap in the sense that both petitions include two “families” of challenges to claims, Heller-based challenges and Gross-based challenges. Patent Owner argues that Petitioner should have presented its Heller-based challenges in one petition and the Gross-based challenges in another petition so that we could have separately decided whether to institute review of each family of challenges. Patent Owner’s argument has merit insofar as presenting each family of challenges against all 11 of the claims that are collectively challenged may have resulted in fewer words overall. We would have preferred Patent Owner’s suggested approach. Nevertheless, we institute review in both proceedings for two primary reasons. First, we find Petitioner’s explanation for why it could not fit both families of challenges into the word-count allocated to one petition reasonable. For example, Petitioner spent a substantial portion of its allocated word-count addressing issues of discretionary denial under §§ 314 and 325(d) on the chance that Patent Owner would request such a denial. See, e.g., Pet. 80–88. Doing so, trimmed the space available to address the merits of its challenges, the subject matter that forms the basis of inter partes review. Ultimately, Patent Owner chose not to request discretionary denial on the issues Petitioner addressed. We consider it reasonable for Petitioner to have used space to address these issues of discretionary denial, with the result that addressing all issues of patentability could not fit in one petition. Petitioner also devoted considerable space explaining the relevant prosecution history and educating the panel on concepts that were within the background knowledge of an ordinarily skilled artisan relating to calibration of glucose monitoring devices and methods. Pet. 8–15, 30–35. These portions of the Petition provide critical context for deciding the merits of all the challenges presented. The merits of Petitioner’s challenges as collectively presented in the ’921 Petition and this Petition warrant an inter partes review, and a trial will resolve the dispute over all those challenges with estoppel effect. Second, we find that material differences exist between the Heller- based and Gross-based challenges that require independent analyses. These material differences are apparent from even a high-level review of the arguments presented in the Petitions and Preliminary Responses. We agree with Patent Owner that substantial overlap exists between the two Petitions when comparing the Heller-based challenges in the two petitions or the Gross-based challenges in the two petitions. Ranking Resp. 2–3. But this overlap reduces the burden that the Patent Owner will bear in responding to those challenges and the burden that we will face in adjudicating them. Accordingly, we discern no undue burden placed upon us or the parties in having a trial in both proceedings so that the merits of the Heller-based and Gross-based challenges can be resolved with estoppel effect by a final written decision. Collectively, the two petitions reasonably challenge the patentability of 11 claims based on two different primary references. We discern nothing unusual about the scope of this dispute that justifies considering only the challenges set forth in the ’921 Petition.” slip op. at 8
- BurdenDecided for petitioner
“Regarding Patent Owner’s first argument, Petitioner persuades us that Heller’s “factory-determined calibration measurements” are reasonably likely to constitute “prior calibration information” that includes “prior sensitivity information associated with the transcutaneous glucose sensor.” First, that the calibration measurements are “factory-determined” implies “prior” generation of the information. Second, Heller expressly describes its processing circuit 109 using this calibration data to “correct signals from sensor 42.” Ex. 1005, 77:6–7. Second, Dr. Smith strongly supports his testimony regarding what an ordinarily skilled artisan “would have recognized” about Heller’s calibration measurements by citing numerous examples of objective evidence that appear to be highly probative based on our initial review. Third, Patent Owner offers no expert testimony at all much less testimony that refutes Dr. Smith’s opinion or establishes that the objective evidence upon which he relies fails to support his opinion. Instead, Patent Owner merely responds with argument from its attorneys and their implied opinion about what an ordinarily skilled artisan “would have recognized” about Heller’s factory-determined calibration measurements. Accordingly, we find Dr. Smith’s testimony to be unopposed at this stage of the proceeding and more than sufficient to meet Petitioner’s burden to establish a reasonable likelihood that Heller describes limitation 10d.” slip op. at 21
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“of the challenged claims expressly recites “means” and all are presumed not to contain terms that are subject to interpretation under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows: The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. . . . When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal citations omitted). At this stage of the proceeding, neither party has presented evidence probative of whether an ordinarily skilled artisan would understand “processor programmed to calibrate . . .” as recited in claim 1 has a “sufficiently definite meaning as the name for structure.” In the absence of such evidence, we must presume that the term is not interpreted as a means-plus-function limitation, just as Petitioner proposes. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (vacating conclusion that “program that can operate” and “code being configured to” were means-plus-function limitations when challenger failed to adduce evidence probative of the understanding of ordinarily skilled artisan). We discern no requirement in Rule 42.104(b)(3) to require Petitioner to advance” slip op. at 12
- Other 314aInstitution denied discretionary otherDenied
“Recognizing that the briefing and evidence before us may not result in a violation of Rule 42.104(b) because the parties place no issue in dispute on whether § 112, ¶ 6 applies, the dissent concludes that we should deny the Petition in our discretion. The exercise of discretion would be warranted to promote the interests of: “efficiency in the patent system, improvement of patent quality, and reduction of counterproductive litigation costs.” Dissent 11–12. We disagree. The District Court of Delaware has stayed its consideration of all issues of patent infringement, patent invalidity, and unenforceability pending resolution of Petitioner’s defense of non-infringement due to license and counterclaim for breach of license. Ex. 1089, 2. Trial in the District Court on the issues not stayed has been set for July 10, 2023. Id. at 12. In effect, the District Court of Delaware likely will not reach the merits of Petitioner’s obviousness arguments until after we enter a final written decision in this proceeding. Petitioner provides the evidence necessary to decide the issues it has presented, and Patent Owner will have a full and fair opportunity to meet that evidence. If Patent Owner wishes to make a case that § 112, ¶ 6 applies to the processor limitations, it is free to do so. After we enter a final written decision, Petitioner will be estopped under 35 U.S.C. § 315(e) from litigating an invalidity defense that it raised or could have raised before us. Assuming that Petitioner were to press an indefiniteness defense based on § 112, ¶ 6 applied to the processor limitations in the District Court, that Court will be able to decide whether positions taken by Petitioner before us would preclude it from advancing that defense in that forum. Simply, we find it to be most efficient for us to resolve the issues of patentability presented by both parties during a trial before the Board and for the District Court to resolve the legal issues presented by the parties in that forum when the time comes, which will exclude invalidity defenses that were or could have been raised by Petitioner here. For all these reasons, we do not discretionarily deny the Petition. D. Legal Standards” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,993,642
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.