• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand

  The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01089 · APJ Barry L Grossman · IPR · Remand

  On remand, the Board held claims 1–13 not shown unpatentable because the cited combinations did not teach or suggest limitations D(1), D(2), and D(3).

  RulingsRemand decision

  • RemandOther

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Sturgell, 553 U.S. at 894–95 to determine whether Apple is a privy of Petitioner. After doing so, we reach the conclusion that there is no persuasive evidence that Apple is a privy of Petitioner because:” slip op. at 50

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The Graham analysis includes a factual determination of the level of ordinary skill in the art. Without that information, a court, or this Board, cannot properly assess obviousness “because the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Thus, the level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Petitioner states “[a] person having ordinary skill in the art” slip op. at 55

  • Expert testimonyPetitioner expert discountedOther

    “access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01089 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner did not prove claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • Skill levelSkill level board ownOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. slip op. at 60

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41

  • Skill levelSkill level board ownDecided for patent owner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Nov 30, 2023 · IPR2022-01006 · APJ Barry L Grossman · IPR · Final written decision

  The Board held claims 1–17 not unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “6. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. Accordingly, based on the totality of the evidence of record and our” slip op. at 48

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “relationship, involving legally binding contractual relationships between Apple and Petitioner, is sufficient under Taylor to make Apple a privy to this IPR proceeding. Id. Patent Owner also asserts that Apple is a privy to this IPR proceeding because Petitioner is capable of adequately representing Apple’s interests in this IPR proceeding. Id. On the record before us, for purposes of this Decision, we disagree with Patent Owner’s conclusion that Apple is a privy for purposes of this IPR proceeding. Patent Owner ignores the practical consequences of its own actions that precipitated the current situation.” slip op. at 47

  • Skill levelOther

    “not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 53

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). slip op. at 57

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentable
  PTAB · Feb 3, 2022 · IPR2020-01475 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 7–12 were not shown unpatentable because the evidence did not establish the claimed algorithm selection over Sanders or motivation to combine Duggan with Pilley.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 17–18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing 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 not foundNot shown unpatentableNot shown unpatentable

    “First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 35

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Dr. Kaputa testifies “a [skilled artisan] would not use the words maneuver and algorithm interchangeably. Indeed, not even Sanders does so and instead makes clear that a collision avoidance algorithm includes maneuvers.” Ex. 2011 ¶ 57 (citing Ex. 1005, 141 et seq.). Dr. Kaputa further testifies “a maneuver can be executed via an algorithm, however, in the case of Sanders there is a clear delineation between maneuvers and collision avoidance algorithms.” Id. Dr. Kaputa further testifies: Sanders further states “Many collision avoidance algorithms in the literature seem to choose a maneuver direction with little thought of justification. As we will see, however, this decision can depend on many factors. Collision avoidance maneuvers usually fall into one of four categories: horizontal maneuvers, vertical maneuvers, speed changes, and combination maneuvers. EX. 1005 at 65 (emphasis in original). Further, “Most algorithms in the collision avoidance literature seem to use horizontal resolution maneuvers.” Id. at 65–66. Thus, it is clear that for a [skilled artisan], a collision avoidance maneuver is not a collision avoidance algorithm, rather it is an instruction contained within a higher level collision avoidance algorithm that may be performed under the right circumstances. Id. ¶ 60. Petitioner submits no evidence to rebut this testimony by Dr. Kaputa. Further, this testimony is consistent with Dr. Hansman’s declaration testimony. See Ex. 1003 ¶ 106 (testifying the “the continuous algorithm determines when to maneuver up . . . or down”). In addition, Sanders discloses its continuous algorithm contains a step where it “Compute[s] collision avoidance maneuver.” Ex. 1005, 149. We therefore credit Dr. Kaputa’s testimony because it is based on corroborating evidence from Sanders over Dr. Hansman’s unsupported deposition testimony. To the extent that Petitioner contends that these maneuvers correspond to collision avoidance algorithms in the ’232 patent (Pet. Reply 8–9), Petitioner’s contention is not persuasive because it is attorney argument not supported by evidence. Consequently, Petitioner fails to establish with evidence that” slip op. at 18

  Patent outcomesUS 7,228,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,228,232
• Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentable
  PTAB · Feb 3, 2022 · IPR2020-01474 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6 and 13–18 were not shown unpatentable because the petitioner failed to prove the asserted obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Although Petitioner provides no explicit claim construction analysis in either the Petition or the Reply, in analyzing the challenge based on Sanders, the Petition states “Sanders implemented DSAAV10 system includes two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver.”11 Pet. 21. Petitioner then contends “Sanders’ algorithm selects 10 “DSAAV” refers to the Draper Small Autonomous Air Vehicle. Ex. 1005, 21. 11 Sanders describes the bang-bang maneuver and the continuous maneuver. See Ex. 1005, 68 et. seq. a maneuver (bang-bang or continuous).” Id. at 23. Dr. Hansman likewise testifies “Sanders’ implemented DSAAV system includes two types of collision avoidance algorithms: bang-bang and continuous maneuvers” and “[t]he CAS selects one of these algorithms when an obstacle is detected.” Ex. 1003 ¶ 101. Similarly, Petitioner applies Patent Owner’s construction of selecting in analyzing Ground 5. Pet. 70–71. Thus, both Dr. Hansman and Petitioner analyze the claims using Patent Owner’s construction that both “selecting an obstacle avoidance algorithm” in claim 1 and “means for . . . selecting an obstacle avoidance algorithm” in claim 13 require selection from one or more collision avoidance algorithms. Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the following reasons, we find Petitioner has not established that Sanders discloses “selecting an obstacle avoidance algorithm” as required by claim 1. The Petition specifically states that Sanders system includes “two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver” and “selects a maneuver (bang-bang or continuous).” Pet. 21, 23. Dr. Hansman, likewise, testifies Sanders “selects one of these algorithms when an obstacle is identified.” Ex. 1003 ¶ 101. Petitioner, however, does not dispute Patent Owner’s contention that Sanders only intended the continuous algorithm to be flown. See generally Pet. Reply. We now turn to the disclosure in Sanders concerning whether Sanders at least suggests that both collision avoidance algorithms would be available for selection during flight. Sanders discloses it anticipated running actual flight tests on vehicles with its CAS “in the coming year.” Ex. 1005, 136. The fact that Sanders had not yet engaged in any actual flight testing is not dispositive of whether Sanders teaches or suggests that both the bang-bang algorithm and the continuous algorithm would be available for selection during flight. After discussing the bang-bang algorithm, Sanders states that limitations of the bang-bang maneuver “sparked the design for the continuous DSAAV collision avoidance controller, described next.” Id. at 78. Sanders begins the description of the continuous controller by stating that “we wanted to eliminate the shortcomings of the open-loop controller, especially the all-ornothing behavior which gets it into trouble.” Id. Sanders also states “the continuous controller . . . will probably be used in the flight tests.” Id. at 73. Petitioner does not point to any disclosure in Sanders that it contemplated using both algorithms in upcoming flight tests nor has our independent review resulted in any disclosure from which it could be inferred that Sanders intended to include both algorithms during flight tests. In light of the foregoing, we find Petitioner has not shown that” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “For the following reasons, we determine that Petitioner has not established that a skilled artisan “would have been motivated to modify Duggan’s air collision avoidance component to integrate Pilley’s air collision detection processes.” Pet. 58. First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test for obviousness is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference between Duggan and Pilley is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 36

  Patent outcomesUS 7,228,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,228,232
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00886 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: the Outils, Roelle, and Matsunaga combination did not establish the claimed control system, and the second ground did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “experience could compensate for less education.” Pet. 12 (citing Ex. 1003 ¶ 44). Mr. Reed’s opinion testimony merely repeats Petitioner’s conclusion without any analysis and without disclosing the underlying facts or data on which his opinion is based. Accordingly, his testimony on this issue is entitled to no probative weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In our Decision to Institute, we adopted Petitioner’s proposed level of skill. Dec. Inst. 36. Patent Owner states that “[f]or purposes of these proceedings only, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 4. Neither party provides any evidence of the factors listed above that normally inform our determination of the level of ordinary skill. For the purposes of this Decision, based on the prior art, we maintain” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “Power Supply Circuit” Patent Owner believes that no construction is required for the term “power supply circuit” because “the construction of this term is not relevant to the issues raised herein.” PO Resp. 10. Patent Owner also asserts that the “District Court in the parties’ related district court litigation rejected Petitioner’s proposed construction.” Id. (citing Ex. 2025, 8). Petitioner disputes Patent Owner’s characterization of the District Court’s claim construction. Reply 5. Moreover, Petitioner asserts that the District Court’s construction of “power supply circuit” “would not impact the Petition’s demonstration of the challenged claims’ unpatentability.” Id. We maintain that the determination in our Decision to Institute that we need not construe this term to resolve the dispute before us.” slip op. at 25

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “determine that Patent Owner’s proposed construction of the “accommodating position” phrase, which is a “horizontal position over the main body” (PO Resp. 13) is not supported by the evidence. We agree with Petitioner’s proposed construction that the “accommodating position” phrase is a position relative to the main body for when the gardening tool or mower is not being used (Reply, 6), with a minor clarification. As Patent Owner argues, Petitioner’s proposed construction “is incorrect because it encompasses any handle position when the mower is turned off, and thus reads out the claimed “accommodating position.” Sur-reply 3. Our proposed construction modifies Petitioner’s construction to recognize Patent Owner’s argument. For purposes of this Decision, the phrase “accommodating position relative to the main body” in claims 1 and 11 is given its ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. This meaning is any position of the handle, other than the “secure position,” that prevents the motor from being started by the operation assembly and stops the motor if it is running. This is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “14 A petitioner must explain why a person having ordinary skill in the art would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a person having ordinary skill in the art would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling an electrical supply contactor from Figure 1. light of Outils’s disclosure of control components other than an electrical supply contactor connected to hold-to-run control component 30 in the embodiment of Figure 1; (3) Petitioner’s reliance on 16 C.F.R. Part 1205 to support the understanding of a person having ordinary skill in the art; (4) Petitioner’s reliance on Outils’s disclosure at page 2, lines 24–27, to support the understanding of a person having ordinary skill in the art; and (5) Petitioner’s contention that it would have been obvious to add an operation assembly to the embodiment of Outils’s Figure 10. First, it is undisputed that the text describing Figure 10 does not mention a hold-to-run control component connected to an electrical supply contactor. See Ex. 1014, 8:22–9:13.15 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor. Second, in describing the embodiment of Figure 1, Outils discloses that hold-to-run control component 30 can function in one of three different ways. Control 30, through remote control cable 29, can act on (1) a motor brake, (2) a brake coupling, or (3) an electrical supply contactor. See Ex. 1014, 4:5–8; see also Pet. 31 (acknowledging that Outils’s hold-to-run control component 30 “acts on a motor brake, a brake coupling or an electrical supply contactor” (emphasis added)). Neither Petitioner nor Mr. Reed persuasively explains why a person having ordinary skill in the art would have understood the embodiment of Figure 10 to have hold-to-run control component 30 connected to an electrical supply contactor, rather 15 Outils references Figures 9 and 10 at page 7, line 15. This reference is a typographical error. The reference should be to Figures 8 and 9, which include means 4 and actuator 20. See Ex. 1014, 7:15–8:20, Figs. 8, 9; Dec. Inst. 30; Reply 9 n.5. than a motor brake or brake coupling. That is, Petitioner does not provide persuasive evidence supporting the contention that, out of the three possible control devices disclosed as connected to hold-to-run control component 30—a motor brake, a brake coupling, or an electrical supply contactor—a person having ordinary skill in the art would have understood from Outils’s disclosure that the embodiment of Figure 10 specifically includes an electrical supply contactor. There is no persuasive evidence that the embodiment of Figure 10 in Outils, which includes actuator 23 and cam 24, also includes hold-to-run control component 30 and only the electrical contactor to the exclusion of the other two control components. There also is no persuasive evidence, in this embodiment, actuator 23 and cam 24 enable, i.e. unlocks, or disables, i.e., locks, hold-to-run control component 30 and the associated electrical supply contactor from starting the motor, as required by the control system limitation.” slip op. at 48

  Patent outcomesUS 9,826,686 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because the evidence did not establish that Outils disclosed or suggested the claimed first and second control devices.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityGranted

    “In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached

    “Patent Owner argues that “[t]his proceeding should be dismissed because the assigned Administrative Patent Judges are principal officers of the United States and yet were not appointed by the President and confirmed by the Senate” in violation of the Appointments Clause. PO Resp. 52–53. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 50

  Patent outcomesUS 9,596,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01054 · APJ James A Tartal · IPR · Final written decision

  Claims 1–4, 6–9, and 11–20 were not shown unpatentable because Petitioner failed to establish a sufficient rationale to combine Hedderwick, Koning, and Benac.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Critically, neither Petitioner nor Mr. Prairie acknowledge, much less bridge, the gap between Koning’s use of a brush belt with bristles generally facing downward to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in the proposed combination to receive seeds that are deposited onto or into the bristles from above. In short, what Petitioner casually calls a “known technique” was not taught or suggested by Koning. Patent Owner explains this issue as follows: Koning does not suggest using a brush-belt for retaining and conveying seeds without a separate conveying member to bear their weight. A [person of ordinary skill in the art] would not predict that Koning’s brush-belt could be used successfully for that purpose because, inter alia, a [person of ordinary skill in the art] would not predict that Koning’s belt would successfully receive, retain or convey small seeds on its own due to the unique and unpredictable dynamics of such a belt. Ex. 2203, ¶¶ 136– 138, 164–167. Fundamentally, Koning’s belt, which is intended to steady potatoes while they are conveyed, is not a conveyor belt. Instead, it is a moving belt positioned over top of the potatoes; not intended to support their weight. Petitioners are thus not suggesting using a “familiar element according to known methods” to “yield predictable results.” Cf. KSR, 550 U.S. at 401.” slip op. at 33

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “The basis for Mr. Prairie’s opinion, that a seed would be captured by a moving brush belt in the proposed combination, appears to only be the prior art references themselves. Ex. 2193, 214:6–14, 118:7–23. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” Ex. 2263, 79:17–19, 80:2–4. Mr. Prairie’s reliance on the prior art to support his conclusions is unpersuasive because Mr. Prairie does not account for the differences discussed above between the cited references’ usage of brush belts compared to the way it is used in the proposed combination. In particular, as relevant to the discussion here, Koning does not teach using a brush belt to capture seeds that have been released from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds released from above, as in the proposed combination.” slip op. at 34

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 39 (citing Ex. 1002 ¶¶ 21, 22). Mr. Prairie opines this same level of ordinary skill, but adds the additional sentence that such an “ordinary artisan would have been familiar with the mechanics and design of agricultural planters.” Ex. 1002 ¶ 22. Mr. Prairie does not disclose the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”) (citations omitted). According to Patent Owner, a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or closely related field, and “about two years of experience designing agricultural products or related machinery in industry or academia,” or, alternatively, “about five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” PO Resp. 2–3 (citing Ex. 2203 ¶¶ 47– 52). Patent Owner adds that “[s]uch a person would typically have experience designing projects on a component or small sub-system-level rather than redesigning a larger planting system.” Id. In support of Patent Owner, Dr. Glancey states that Petitioner’s proposed level of ordinary skill is “too restrictive and sets the level of ordinary skill in the art of the ’173 [p]atent too high.” Ex. 2203 ¶ 49. Dr. Glancey provided the following reasons: (1) undergraduate engineering curriculums in place in February 2009 focused on design at the freshman level and continued this focus throughout the student’s degree program, thus avoiding the need for significant post-graduate design experience; (2) masters programs in engineering focus on research for publication in peer-reviewed journals, rather than designing products for industry; and (3) engineering technicians, who may not have formal engineering degrees, “often have years’ worth of relevant hands-on experience” that corresponds to a person of ordinary skill in the art. Id. ¶¶ 50–52. Based on the evidence and arguments of record prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. To the extent there is any inconsistency, we credit the testimony of Dr. Glancey over Mr. Prairie because Dr. Glancey’s opinion was more supported with more persuasive analysis and reasoning, as summarized above. However, we note that the differences between the parties’ proposed definition of the level of ordinary skill in the art are not determinative. The analysis below would be materially the same under either party’s proposed definition.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 18

  Patent outcomesUS 10,004,173 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,004,173

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.