- NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
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 given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01066 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 under all three obviousness grounds and granted NXP’s conditional motion to join the Texas Instruments IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01066), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00935. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 6
- 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 given below, we institute inter partes review of the Challenged Claim of the ’177 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00935.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“join as a party to [an instituted] inter partes review any person who properly files a petition under section 311 that . . . after receiving a preliminary response under section 313 or the expiration of the time for filing such a response . . . warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.” slip op. at 7
Discretionary denialPatents in suitUS 7,865,177 - Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00999 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Whether we institute review depends on whether we grant Petitioner’s Motion for Joinder. If granted, the one-year bar does not apply. See 35 U.S.C. § 315(b). If denied, the Petition is time-barred. See id.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As in Code200 I, Petitioner provides no explanation as to why it did not file a petition seeking inter partes review of the ’659 patent within the one-year window. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for why it waited over three years to seek to challenge the patent through IPR proceedings.”). Furthermore, Petitioner provides no explanation as to why joinder would be fair or otherwise in the interests of justice. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for how joinder would be fair to, and not otherwise prejudice, Patent Owner.”). Accordingly, Petitioner has failed to establish that it is entitled to the requested relief under our Rules. See 37 C.F.R. §§ 42.1, 42.20(c). For the forgoing reasons, we exercise our discretion to deny Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 9,586,659 - Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“This statute further provides that the petition for inter partes review must be filed no later than “1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5
Discretionary denialPatents in suitUS 9,359,044 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring Inc.Institution deniedPTAB · Dec 10, 2024 · PGR2024-00031 · APJ Elizabeth M Roesel · PGR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims, and declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’179 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway at 6. Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.207(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
NonePatents in suitUS 11,868,179 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring Inc.Institution deniedPTAB · Dec 9, 2024 · IPR2024-00930 · APJ Michael A Valek · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims, and declined to enter adverse judgment.
RulingsInstitution decision- Adverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway at 6. Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc. v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022) Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’147 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
NonePatents in suitUS 11,599,147 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Oura Health OYInstitution deniedPTAB · Dec 9, 2024 · IPR2024-00929 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–12, and declined to enter adverse judgment.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’833 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
NonePatents in suitUS 10,893,833 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the 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 the 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.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178
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.