- PTAB · Feb 5, 2025 · IPR2024-00921 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–15, 17–21, and 39 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “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). “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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25–26 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. at 26 (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Spatial Coding Petitioner argues that “spatial coding” means “coding in the spatial domain.” Pet. 28. According to Petitioner, the specification of the ’991 patent “describes spatial coding as the coding (e.g., quantizing and entropy coding) of pixel values in the spatial domain ‘without transform,’ but without limiting it to a particular algorithm or technique.” Id. (citing Ex. 1001, 5:6–23, Fig. 4). “Patent Owner does not contest Petitioner’s construction for the sake of this [Patent Owner Preliminary Response], but reserves the right to challenge this construction in the event of institution.” Prelim. Resp. 21. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“3. “The Difference Signal” (Claims 13 and 14). Petitioner argues that claims 13 and 14 “contain a drafting error that recites ‘the difference signal,’ without antecedent basis.” Pet. 29. According to Petitioner, a person having ordinary skill in the art “would have understood ‘the difference signal’ in these claims to mean ‘a difference signal representing differences between sample values of a predicted block of data and values for an original input block’ as recited in limitation [1a] of claim 1.” Id. For purposes of its Preliminary Response, Patent Owner “agree[d] with Petitioner’s construction of ‘the difference signal’ in Claims 13 and 14.” Prelim. Resp. 24. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PTAB · Jul 11, 2022 · IPR2022-00324 · APJ Russell E Cass · IPR · Institution
Instituted IPR of claims 1–7, 9, and 11–16 on all grounds; Samsung showed a reasonable likelihood of proving at least one challenged claim unpatentable, and discretionary denial was unwarranted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In weighing factor two, we follow the Interim Fintiv Guidance, which directs us to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides,” which is 24.2 months. Interim Fintiv Guidance 8–9. Applying this time period, the expected trial date would be in November 2023, which is several months later than the July 2023 due date for our final written decision in this case. We do not agree with Patent Owner that the median time-to-trial statistics are not relevant here because the parties can only move the trial date upon a showing of “good cause.” See PO Supp. Br. 1 (citing Ex. 2003, 1, 5). We also do not agree that the speculative possibility that the district court might grant summary judgment weighs in favor of exercising discretion to deny institution, particularly because Patent Owner has not provided any reason why summary judgment is likely in this case. See id. at 2. Consequently, we find that this factor weighs against exercising discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed
“Based on the present record, Petitioner has sufficiently shown that the preambles of independent claims 1, 11, and 14 are non-limiting. The preamble of claim 1 recites a “headset,” but the “headset” is not referenced in the body of that claim, which appears to recite a structurally complete invention. Similarly, the preambles of claims 11 and 14 recite an “earpiece,” but the body of those claims do not reference the “earpiece” and appear to recite a structurally complete invention. Additionally, the Examiner determined during prosecution that the terms “a headset” and “earpiece” recited in precursors to the independent claims “ha[ve] not been given patentable weight” because “the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause,” and the applicant did not dispute this determination. Ex. 1004, 69, 131. Thus, the preamble terms “headset” and “earpiece” appear to be more akin to the intended use of a structurally complete invention recited in the body of the claim than an “essential element” of the claimed invention that should be given patentable weight. However, we question whether Petitioner has sufficiently shown that the preambles of dependent claims 2, 3, and 16 are non-limiting. Each of these claims refers to the preamble in the body of the claim. For example, claim 2, states that the “event” of claim 1 “is a touching of the headset,” claim 3 states that the processor “triggers the event responsive to detecting an abrupt movement of the headset, or a change in location of the headset.” Similarly, claim 16 states that the “event” of claim 15 “is a touching of the earpiece” or “an abrupt movement of the earpiece.” In Arctic Cat, the Federal Circuit distinguished the non-limiting structural language in the preamble from a situation where preamble language “suppl[ies] ‘antecedent basis’ for terms in the body,” and identified this factor as one of “[t]he rules we have articulated about what preamble language reciting structure is limiting.” Arctic Cat, 191 F.3d at 1329. The parties may further address the issue of whether the preambles of the challenged claims are limiting during the trial.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Other than the preambles, the parties do not propose constructions for any other claim terms. Pet. 17; Prelim. Resp. 15. We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,254,591
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.