- PTAB · Mar 7, 2025 · IPR2024-01347 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR of claims 1–27 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“framework: (1) 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; 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 must 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” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesNo construction neededOther
“1. Means-Plus-Function Terms Challenged claim 26 recites elements using the word “means.” See Ex. 1001, 21:6–22:5. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies.9 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claim 26. See Pet. 6–8; see generally Prelim. Resp. a. “system firmware means for detecting loss of lockstep (LOL) for a processor in a multi-processor system” (Claim limitation [26a])” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that these terms “should be construed to include both mismatch errors and errors that may eventually result in mismatch errors constituting a ‘precursor to lockstep mismatch’—including at least one of (1) detecting a lockstep mismatch error; and (2) detecting an error that may eventually cause a lockstep mismatch error.” Pet. 6. Petitioner asserts that “[t]he specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:40–3:6, 7:25–36; Brogioli Decl. ¶¶ 34–36). Petitioner further asserts that this construction “is consistent with the undisputed construction in the IPR challenging U.S. Patent No. 7,502,958.” Id. (citing BMW of N. Am., LLC v. Foras Techs. Ltd., IPR2023-01373, Paper 18 at 2 (PTAB July 12, 2024)). Patent Owner does not dispute Petitioner’s position or discuss claim construction in the Preliminary Response. meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy. 3. Summary and Conclusion For the reasons given, we determine that at this stage, we do not need expressly to construe any claim term for this Decision. 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., 200 F.3d at 803)).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have at least a bachelor’s degree in computer science, computer engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault-tolerant computer architecture design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Brogioli Decl. ¶¶ 28–30). At this stage, Patent Owner does not respond to this contention. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’302 patent specification and the asserted prior art.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,624,302 - PTAB · Mar 7, 2025 · IPR2024-01346 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of unpatentability based on Fox, Safford, and Arai, with or without Landry.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As can be seen in the discussion above and the analysis of Petitioner’s grounds below, Arai and Landry are significant to Petitioner’s challenges. Because the Office did not previously consider all of the prior art references or combinations of references relied on in the Petition, including Arai and Landry, and because Arai and Landry are not the same or substantially the same as the art that was previously considered, we determine the Office did not previously consider the same or substantially the same prior art as is relied on in the Petition.8 Further, we find that there is not a substantial overlap, if any, between the arguments made during examination and the manner in which Petitioner relies on the prior art, including Arai and Landry, as discussed above. Therefore, part one of the Advanced Bionics framework is not met, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding under 35 U.S.C. § 325(d). We therefore institute inter partes review on all challenged claims and all grounds. See” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine Fox, Safford, and Arai and Fox, Safford, Landry, and Arai Petitioner asserts that a person of ordinary skill “would have found it obvious to combine Fox’s multiprocessor system with Safford’s lockstep processor and error detection logics and Arai’s processor-switching implementation details.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to implement the processors in Fox as lockstep processors to improve reliability and availability of Fox’s server system for critical processes, for which higher reliability and availability of the system are desired.” Brogioli Decl. ¶ 90. He further testifies that “[a person or ordinary skill] also would have been motivated to implement in Fox the error detection logics that detect loss of lockstep together with the lockstep processors as taught by Safford to implement lockstep functions and further improve availability of the system.” Id. He testifies that “[a person of ordinary skill] would have understood how to implement Fox’s processors as lockstep processors with error detection logics and expect success. [A person of ordinary skill] would only have applied well-known configurations and ordinary hardware and software configuration skills.” Id. ¶ 91. Dr. Brogioli provides additional reasons motivating the combination. Id. ¶¶ 92–99. Petitioner contends that “Arai discloses switching the role of a failing processor with a spare processor.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to incorporate Arai’s teaching of transferring processor context from the failing processor to the spare processor not to interrupt the operating system and its running applications as desired by Fox.” Brogioli Decl. ¶ 109. He reasons that “[a person of ordinary skill] would have understood that incorporating Arai’s benefit of switching the role of the failing processor to the spare processor without affecting the operating system and running applications, which is expressly taught as desirable by both Fox and Arai and well known in the art.” Id. ¶ 110. Petitioner asserts that a person of ordinary skill also would have been motivated to further combine these references with Landry. Pet. 33–35. Dr. Brogioli testifies that “Landry discloses a fault-tolerant boot process that dynamically designates a functional CPU as logical CPU0 that performs the unique functions of a boot processor.” Brogioli Decl. ¶ 147. He testifies further that “[a person of ordinary skill] would have understood Landry’s process would have been a suitable option for selecting a boot processor in Fox’s system consistent with the initialization protocol of the IA-32 multiprocessor system.” Id. He asserts that “[a person of ordinary skill] would have understood the benefits of implementing Landry’s boot processor selection process in Fox.” Id. ¶ 148. Among other reasons, “[a person of ordinary skill] would have further understood that using the logical CPU0 as the identification for the boot processor allows for transparent replacement of the physical processor experiencing a failure with another processor without interrupting the operating system.” Id. At this stage, Patent Owner does not respond to these arguments by Petitioner or refute the testimony by Dr. Brogioli. On this record, we find that Petitioner has sufficiently demonstrated a motivation to combine Fox and Safford with Arai and to further combine these references with Landry with a reasonable expectation of success.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are not aware of any controversy between the parties over the meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,627,781 - PTAB · Mar 5, 2025 · IPR2024-01357 · APJ Daniel Kazhdan · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 on all four obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that this factor marginally favors Petitioners. Fintiv explains that the fact that a “district court has denied a motion for stay without prejudice” and has indicated on the record “that it will consider a renewed motion or reconsider a motion to stay if a PTAB trial is instituted” “has usually weighed against exercising authority to deny institution.” Fintiv, Paper 11 at 6–7. That is what happened here. When the district court denied Petitioner Savant’s motion for a stay in the Ohio litigation, it stated that, “[i]f the Patent Trial and Appeal Board accepts the petition for inter partes review, the parties may rebrief this issue.” See No. 1:24-cv-473 (N.D. Ohio) December 12, 2024, Order. Ex. 1025. Thus, this factor weighs marginally against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“prevail in showing that it would have been obvious to use blue light with a wavelength that is greater than 440 nm. Basin-2007 does not specify a specific wavelength for the blue light, but, as Patent Owner acknowledges, “blue light is generally emitted in the range of 380 to 500 nm.” Prelim. Resp. 55; see Ex. 1002 ¶ 121. Thus, the question is whether a skilled artisan, when looking for which wavelength to use, would have found it obvious to use anything in the half of the blue-light range that is greater than or equal to 440 nm. On its own, this overlap in ranges would be strong evidence of obviousness. See Galderma Lab’ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Petitioners show even more. Basin-2005 discloses that there is an “assum[ption]” that blue-light LEDs emit “in the range of 420-490 nm.” Ex. 1006 ¶ 30 (cited in Pet. 25). Basin-2005 additionally teaches that its “blue, UV, or near UV LED[s]” are “relatively easy to implement and consistently produce[] the desired white light temperature.” Id. ¶ 6 (cited in Pet. 25). Furthermore, Shimizu and Stokes indicate that people were using higher wavelength blue-light in their LEDs. See Pet. 8, 24–25 (citing sources). Because a skilled artisan would have needed to select some wavelength for the blue light disclosed in Basin-2007, at this stage, we conclude that the skilled artisan would have found it obvious to include wavelengths from the higher end of the range—as disclosed in so many references. Basin-2007 discloses using a “conventional white light LED.” See Ex. 1005 ¶ 21. As evidenced by Shimizu and Stokes, the conventional white light LED sources used blue light with wavelengths greater than or equal to 440 nm. See Ex. 1002 ¶ 121 (citing sources). Patent Owner argues that “quantum efficiency” considerations would lead to using lower wavelengths, but Patent Owner does not explain why these same considerations did not convince Basin-2005, Shimizu, or Stokes to use lower wavelengths. Based on our review of the current record, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art According to Petitioners, [A person of ordinary skill in the art] would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline. A [person of ordinary skill in the art] would also have one to two years of experience in the field of LED packaging design. More education could substitute for experience, and vice versa. Pet. 6. For purposes of institution, “Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 36–37. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioners and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We determine that the plain and ordinary meaning of “light diffusing layer” is exactly what it says: “a layer that diffuses light.” The claims separately recite one function for this layer: it must “improve[] an off-state white appearance of the wavelength conversion component.” Ex. 1001 at 26:15–17; see id. at 27:25–27. That is all.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,604,678 - PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,109 - PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).9 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,110 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Sep 4, 2024 · IPR2024-00419 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–26 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 14 are obvious over Baig, Banga507, Banga690, and McFarland.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny petition or due to the alleged lack of particularity in the Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“Consistent with the Board’s practice for handling parallel petitions, Petitioner filed a Petition Ranking (Paper 3, “Notice”). See Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019).2 In the Notice, Petitioner ranks this Petition first among the two petitions challenging the ’015 patent and the petition in IPR2024-00420 second. Notice 1. As is discussed in our separate decision in IPR2024-00420, entered concurrently, we have discretion to deny a parallel petition under 35 U.S.C. § 314(a). In view of Petitioner’s ranking and our assessment of the 1 Those ten additional petitions are the following: IPR2024-00413, IPR2024-00414, IPR2024-00415, IPR2024-00416, IPR2024-00417, IPR2024-00418, IPR2024-00421, IPR2024-00422, IPR2021-00423, and IPR2024-00424. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. issue in our institution decision in IPR2024-00420.” slip op. at 3
- Other 314aDecided for petitioner
“violate[s] the ‘particularity requirement of 35 U.S.C. § 312(A)(3).” Prelim. Resp. 8–13. Patent Owner cites the Petition’s eleven grounds based on nine “express” prior art references and 33 other “shadow”9 references and exhibits. Id. at 10–11. Patent Owner asserts that “it is unclear which references Petitioner intends to be (or not to be) part of each of the grounds in its Petition.” Id. at 12. Patent Owner complains about the length of the petition and accompanying declarations. Id. (“The Petition itself is seventynine pages long (13,850 words), and attaches fifty-six exhibits. One of those exhibits is a 349 page declaration from one of Petitioner’s experts.”) (citations omitted). Patent Owner cites the Board’s informative decision in Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 at 24 (PTAB Mar. 6, 2019). We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation 8 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 9 Patent Owner explains that these are exhibits “attached to the Petition and expressly cited and relied upon by Petitioner’s experts.” Prelim. Resp. 11. particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the Petition in this case could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“institution, Petitioner establishes sufficiently that the combination of Baig, Banga507, Banga690, and McFarland teaches or suggests each of the limitations recited in independent claim 1, and that it would have been obvious to combine the teachings of those references. See Pet. 9–38. Petitioner asserts that “[a person of ordinary skill] would have been motivated and would have found it obvious to incorporate these teachings of Banga507, Banga690, and McFarland in Baig’s system to select targeted advertisements for groups of users demonstrating a pattern of accessing the Internet from a shared AP (e.g., at a coffee shop every Sunday) based on the group members’ collective preferences because doing so would have allowed Baig’s modified system to advantageously improve the relevance of the targeted advertisements provided to the group members.” Id. at 12 (citing Ex. 1007 ¶ 39; Ex. 1015 ¶ 54; Lett Decl. ¶¶ 142–146). Petitioner presents an element-by element analysis supported by expert testimony. Id. at 15–30; Lett Decl. ¶¶ 151–237. At this stage, Patent Owner does not address the merits of Petitioner’s challenge.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,564,015 - Dropbox, Inc. v. Motion Offense, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00286 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR of claims 17–21 on all petitioned grounds, finding a reasonable likelihood that Houston and Garcia render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. As Petitioner argues, there is no evidence that the references in question were meaningfully addressed during the prosecution of the ’520 patent — there was no evaluation of the art or articulation regarding any arguments applying that art. Pet. 11. We note that the IPR petitions were submitted only after the prosecution came to a purported end with an Issue Notification — submission of the petitions briefly postponed issuance, but resulted in no further substantive actions other than a later issuance.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, notwithstanding Patent Owner’s specific arguments directed to claim requirement 17[e], and its arguments discussed above generally relating to all of Petitioner’s grounds, for the reasons discussed above, for purposes of this Decision, we are persuaded that the record sufficiently supports Petitioner’s arguments regarding claim requirements 17[e] and 17[f]. d) Conclusion Regarding Claim 17 Based on our analysis set forth above, including our analysis of Patent Owner’s arguments regarding secondary considerations of nonobviousness, we determine, on the current record and for purposes of this Decision, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that claim 17 is unpatentable under 35 U.S.C. § 103(a) over the combination of Houston and Garcia.” slip op. at 45
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the earliest claimed priority date of the ’520 patent (September 22, 2012): would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer science, or a related field and two or more years of experience in a related field such as networked computer systems using Internet protocols. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 3–4 (citing Mowry Decl. ¶ 29). Patent Owner does not dispute Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 17. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Pet. 40–41; Ex. 2045. Thus, Patent Owner’s argument, that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared, is not applicable to Petitioner’s challenges of claim 17–21. The fact that the Houston system ensures the availability of synchronized local copies of files at each user and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, nothing about that particular difference in the approaches of Houston and Garcia would have discouraged one of ordinary skill in the art from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have been motivated to apply the email and folder interface teachings of Garcia to modify Houston. Mowry Decl. ¶¶ 84–93, 102–104, 148, 151–152. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Houston and Garcia.” slip op. at 35
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - PTAB · Feb 13, 2024 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted obviousness grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response. Paper 9. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Other 314aNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted, Patent Owner has expressly waived filing a preliminary response. Paper 9. At this stage, therefore, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - PTAB · Jan 19, 2024 · IPR2023-00973 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claim 1 based on compelling and reasonably likely obviousness challenges over Redlich alone and Redlich with Ozzie.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner’s argument that Redlich is the same or substantially the same as the ’825 and ’047 patents. Prelim. Resp. 6–11. In contrast to Redlich, the ’825 and’047 patents are not prior art to the ’244 patent. Patent Owner does not dispute Petitioner’s showing that the ’825 and ’047 patents were issued after the ’244 patent’s filing date and are not prior art to the ’244 patent under pre-AIA §§ 102(a), (b), or (e). Pet. Reply 1–2 & n.1 (timelines); see PO Sur-reply 1 (reproducing Petitioner’s timelines). Moreover, Patent Owner points to nothing in the ’244 patent’s file history that would indicate the Examiner considered or applied the ’825 and ’047 patents or the corresponding pre-issuance publications as prior art under §§ 102 or 103. As stated above, Redlich is not listed in the ’244 patent under “References Cited,” and the same is true for the ’825 and ’047 patents and the pre-issuance publication of the ’047 patent. Ex. 1001, code (56). Although the ’825 and ’047 patents were the basis for non-statutory obviousness-type double patenting rejections that were overcome with a terminal disclaimer (Ex. 1002, Part 5, 2375–77, 2384, 2390), the Examiner made no prior art rejection under §§ 102 or 103 based on these patents or the corresponding pre-issuance publications. We also disagree with Patent Owner’s argument that the Petition presents the same arguments as considered by the Office during examination. Prelim. Resp. 2, 6, 12–15. Petitioner’s obviousness challenge based on Redlich and Ozzie is substantially different from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. Patent Owner argues that teaching cloud-based computing and rely on the same rationale for combining the prior art teachings. Id. at 12–14. But Patent Owner makes no argument that Fahlman (cited by the Examiner) is the same or substantially the same as Redlich (relied on by Petitioner). At this stage, Patent Owner does not dispute Petitioner’s contention that Redlich discloses features that were added to the claims to obtain allowance over Fahlman. Pet. 5–8. Petitioner’s undisputed contention distinguishes the obviousness challenge based on Redlich and Ozzie from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. In sum, we determine that the Petition is not based on the same or” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitutedDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling. V. COMPELLING MERITS ANALYSIS A. Legal Standard As discussed infra, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors,” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. REASONABLE LIKELIHOOD UNDER 35 U.S.C. § 314(a) For the reasons discussed in Section V above, we determine that the information presented in the Petition and the Preliminary Response shows a reasonable likelihood that Petitioner would prevail on its challenge to claim 1 of the ’244 patent. Accordingly, we institute an inter partes review. VII. ORDER It is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claim 1 of the ’244 patent is instituted commencing on the entry date of this Decision; and” slip op. at 25
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesOther
“The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, para. 6 (pre-AIA). This statutory provision presumptively does not apply to a claim term that lacks the word “means,” but the presumption can be overcome 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. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Under our rules, a petition must provide a construction for a means- specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104. Petitioner proposes constructions for the claim terms it identifies as means-plus-function limitations. Pet. 11–15. Patent Owner does not address claim construction at this stage of the proceeding. For purposes of this Decision, we apply Petitioner’s proposed constructions, as follows. Claim term Function Corresponding structure” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,468,244
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.