- College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01042 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of review for claims 1, 21, 26, and 28 of the ’876 patent because the petitioner’s earlier Iowa declaratory judgment action triggered § 315(a)(1).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherDenied
“The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1). For these reasons, after considering the parties’ evidence and arguments, we determine that § 315(a)(1) bars institution of inter partes review for these proceedings.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)). Here, there is no evidence that Patent Owner filed a claim as a plaintiff against Petitioner in the Northern District of Iowa and that the Iowa DJ action was a counterclaim in opposition to or against such a claim. Petitioner’s argument that Patent Owner should be precluded from arguing that the Iowa DJ action is not a counterclaim is also not persuasive. Pet. 7. Regardless of whether Patent Owner subsequently argued that the Iowa DJ action was a counterclaim (an argument made in the context of a motion of consolidation), subsequent arguments by Patent Owner would not retroactively transform the Iowa DJ action, which was filed before any claim was filed by Patent Owner against Petitioner in that jurisdiction, into a counterclaim. Thus, we find that Petitioner’s Iowa DJ action was a civil action challenging the validity of a claim of a patent. The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1).” slip op. at 9
Discretionary denialPatents in suitUS 11,274,876 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01043 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because the petitioner’s earlier Iowa declaratory judgment action challenging the patents triggered the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. DISCUSSION A. Legal Standards Section 315(a)(1) of 35 U.S.C. states that “[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Section 315(a)(3) states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection [section 315(a)].”” slip op. at 3
- BurdenDecided for patent owner
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)).” slip op. at 9
Discretionary denialPatents in suitUS 10,495,374 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01041 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of IPR because College Products filed a civil action challenging the patents’ validity before filing the petitions, triggering § 315(a)(1).
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“of the Petitions pursuant to § 315(a)(1). In Avigilon, the Board analyzed the ordinary, common meaning of “complaint,” noting the definition of “‘complaint’ as ‘[t]he initial pleading that starts a civil action and states the basis for the court’s jurisdiction, the basis for the plaintiff’s claim, and the demand for relief.’” Id. at 7 (citing Black’s Law Dictionary 323, 1491 (9th ed. 2009)). Petitioner’s Iowa DJ action meets this definition because it was an initial pleading that started a civil action and stated bases for their claims. See Ex. 1017; Ex. 2006. Specifically, the plain language of § 315(a)(1) does not include an exception for Petitioner’s action (filing a declaratory judgment action challenging validity before filing the petitions) and the terms of § 315(a)(1) have ordinary, common meanings, as discussed above. Id. at 8. The Board in Avigilon also disagreed with Avigilon’s assertion that their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)). Here, there is no evidence that Patent Owner filed a claim as a plaintiff against Petitioner in the Northern District of Iowa and that the Iowa DJ action was a counterclaim in opposition to or against such a claim. Petitioner’s argument that Patent Owner should be precluded from arguing that the Iowa DJ action is not a counterclaim is also not persuasive. Pet. 7. Regardless of whether Patent Owner subsequently argued that the Iowa DJ action was a counterclaim (an argument made in the context of a motion of consolidation), subsequent arguments by Patent Owner would not retroactively transform the Iowa DJ action, which was filed before any claim was filed by Patent Owner against Petitioner in that jurisdiction, into a counterclaim. Thus, we find that Petitioner’s Iowa DJ action was a civil action challenging the validity of a claim of a patent. The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1). For these reasons, after considering the parties’ evidence and arguments, we determine that § 315(a)(1) bars institution of inter partes review for these proceedings. III. ORDER In consideration of the foregoing, it is hereby ordered that the Petitions are denied, and no trials are instituted.” slip op. at 10
Discretionary denialPatents in suitUS 9,791,206 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2
- Skill levelSkill level board ownOther
“different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37
Claim construction§ 103 obviousness - PTAB · Nov 21, 2023 · IPR2023-00865 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–19, finding a reasonable likelihood that claims 1 and 14 are obvious over Carr and Lauka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the above reasons, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least claims 1 and 14 of the ’465 patent are unpatentable as obvious over Carr and Lauka. And because Instacart demonstrates that at least one claim of the ’465 patent meets the threshold for institution, we institute an inter partes review of all claims as challenged in the Petition. See 37 C.F.R. § 42.108(a),(c); SAS, 138 S. Ct. at 1359–60. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–19 of the ’465 patent is instituted; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” Prelim. Resp. 29. Consumeron’s definition appears to overlap significantly with Instacart’s definition. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“product ordered by the customer is available and does not contemplate a scenario where the product is unavailable or otherwise describe the action to be taken if the product is unavailable. See Pet. 17–22. We agree, at least based on the preliminary record. In particular, with reference to Figures 2 and 3, the ’848 parent application describes a method where (1) a customer chooses “a store where a desired product is being sold” (step 105), (2) the customer selects a delivery agent and sends an “acquisition request” to the delivery agent (steps 108, 109, 110), and (3) “the selected delivery agent travels to the store location . . . and finds the desired product to be acquired” (step 113). Ex. 1011 ¶¶ 17, 20, 23 (emphasis added). “The delivery agent then communicates to the customer that the product has been identified, and the customer has the option of inspecting the product in real-time” (step 117). Id. ¶ 23 (emphasis added). “Next, the customer either approves or rejects acquisition of the inspected product” (steps 119, 120, 122). Id. ¶ 24 (emphasis added). That description in the ’848 parent application clearly presumes that the product ordered by the customer has been located and is available for inspection, which is at odds with the additional requirements of claims 1 and 14 of “failing to locate an identified product” and “determining that the identified product is not available.” Ex. 1001, 11:20 (claim 1), 12:30 (claim 14) (emphases added). To the extent Consumeron argues otherwise, we are not persuaded at this preliminary stage. According to Consumeron, the customer’s rejection of the product means that “the agent fails to locate a product that is satisfactory.” See Prelim Resp. 11. But nowhere do we discern that the ’848 parent application hinges the identity and availability of a product on whether it is satisfactory to the customer. That a product might not meet a customer’s satisfaction does not negate the description in the ’848 parent application that the agent locates and identifies the product in the first instance before giving the customer the option to inspect and reject the product. Indeed, because the customer placed the online order with a store advertising the product, the presumption is that the advertised product is available and satisfactory to the customer.8 And, while conceivably the purchase of a product cannot be fulfilled in the event the product is unavailable, it would seem to be improper hindsight to derive written description support by “[w]orking backward from a knowledge of the claims.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). Thus, based on the preliminary record, the ’848 parent application does not provide sufficient written description for the terms noted above. As such, we find that Instacart demonstrates a reasonable likelihood it will prevail in showing that the asserted references are prior art to the challenged claims.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“and Lauka. See Pet. 30–44, 47–49. We begin with Instacart’s challenge of method claim 1. Instacart provides a detailed mapping of how Carr satisfies all the recited limitations of claim 1, except limitation [1.0.3], for which Instacart points to Lauka. See id. at 35–44. In particular, Instacart cites the following evidence in support of its contentions that Carr and Lauka, when combined, teach or suggest each of the recited limitations of claim 1: Limitation 1.0.1—“A method for remote acquisition and delivery of goods through one or more agents of a service provider” (Pet. 35 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 97–100)); Limitation 1.0.2—“each agent having a mobile agent system in communication with at least one remote server,” (Pet. 35–37 (citing Ex. 1005 ¶¶ 2, 6, 40–43, 53, Fig. 1 (annotated); Ex. 1003 ¶¶ 101–104)); Limitation 1.0.3—“with each mobile agent system including: a digital image capture device and a communication device, said method comprising:” (Pet. 37–38 (citing Ex. 1005 ¶¶ 74, 88, 94, 122; Ex. 1006, 3:19–28, 3:49–57, 4:10–21; Ex. 1003 ¶¶ 105– 109)); Limitation 1.1—“receiving, through the at least one remote server, a first acquisition request from a customer for a first set of one or more goods;” (Pet. 38 (citing Ex. 1005 ¶¶ 9, 60, 73, Fig. 1; Ex. 1003 ¶¶ 110–112)); Limitation 1.2—“contacting, through the communications device, the one or more agents;” (Pet. 38 (citing Ex. 1005 ¶¶ 57, 74; Ex. 1003 ¶¶ 113–115)); Limitation 1.3—“upon failing to locate an identified product of the set of one or more goods, electronically transmitting information on a replacement product for the identified product of the set of one or more goods to the customer using the digital image capture device of the agent, including:” (Pet. 38–40 (citing Ex. 1005 ¶¶ 90, 95, 96, 105, 107, ; Ex. 1003 ¶¶ 116– 119)); Limitation 1.4—“obtaining a bar or QR code of the replacement product;” (Pet. 40 (citing Ex. 1005 ¶¶ 95, 107; Ex. 1003 ¶¶ 120– 122)); Limitation 1.5—“determining the information from the bar or QR code, wherein the information includes at least one image of the replacement product; and” (Pet. 40–42 (citing Ex. 1005 ¶¶ 95–96, 116; Ex. 1003 ¶¶ 123–127)); Limitation 1.6—“sending the information for the customer to approve the purchase of the replacement product based on the information determined from the bar or QR code; and” (Pet. 42– 43 (citing Ex. 1005 ¶¶ 51, 96–99, Fig. 12; Ex. 1003 ¶¶ 128– 130)); and Limitation 1.7—“upon receiving approval of the purchase from the customer, acquiring the replacement product, via the agent.” (Pet. 43–44 (citing Ex. 1005 ¶¶ 99, 101; Ex. 1003 ¶¶ 131–132)); Instacart also provides a reason why one skilled in the art would have combined the teachings of Carr and Lauka with a reasonable expectation of success. See Pet. 31–34 (citing Ex. 1003 ¶¶ 86–96); see also id. at 37 (“In view of the teachings of Lauka, a POSITA would have recognized that it was obvious to implement the UPC scanner functionality of Carr’s handheld device using an ‘imaging device’ such as that taught by Lauka, which specifies that the ‘imaging device 206 can comprise a video or still camera’ and ‘can be used to capture images.’ Ex.1006, 3:49-57; Ex.1003, ¶¶105- 107.”).” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,238,465 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00807 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. 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) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes construing “defining an optically transparent window.” Pet. 8–10. Petitioner proposes that “for a cover to ‘define’ an optically transparent window simply means to allow passage of light to a relevant component through the cover.” Id. at 10. Patent Owner “does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 18. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary. See 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))). D. The Alleged Obviousness of Claims 1–3, 5, 6, 8, 10–14, and 16–20 Over” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain persuasively why a person of ordinary skill in the art would have reconfigured Kotanagi’s two rear electrodes meant for determining whether a potential between the electrodes decreases (to indicate lack of skin contact) to enable ECG measurements using the particular configuration recited in the claims. We have considered Petitioner’s contentions in light of both Kotanagi and Coppola and Petitioner’s proposed combination appears hindsight driven. The combination requires that a person of ordinary skill in the art selectively pick portions of each reference while also frustrating the purpose of Kotanagi’s electrodes of ensuring skin contact by determining a potential difference.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,474,483 - PTAB · Nov 6, 2023 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Institution
The Board instituted review of claims 1–7 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Willner and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We are not persuaded by Patent Owner’s arguments. In our previous decision in the 1197 IPR, we exercised our discretion to deny institution under § 314(a) based on our consideration of the Fintiv factors. 1197 IPR, Paper 13, 23. The decision in the 1197 IPR noted that although “there does appear to be some strength to the merits of Petitioner’s challenges,” this determination was based particularly on the fact that “the ’393 patent’s claims share some of the same claim limitations addressed by the Board previously in the ’119 patent’s IPRs.” See id. at 20–21. Therefore, we did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability. 10 We also are not persuaded that the changes between the Petition in the 1197 IPR and the present Petition demonstrates “ample evidence” of road-mapping. Instead, we agree with Petitioner that “[t]hese changes are not road-mapping because they are unrelated to the record in the earlier [1197] IPR.” Pet. Reply 2–3. And, as we explained above, our earlier decision did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability, nor did we address the substantive merits of any of Patent Owner’s counterarguments. See General Plastic, Paper 19, 17 (warning against allowing “petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap.”) (emphasis added); see also id. at fn.14 (citing Butamax Advanced Biofuels LLC v. Gevo, IPR2014-00581, Paper 8, 12–13 (PTAB Oct. 14, 2014) (criticizing petitioner’s use of “our prior decision as a roadmap”) (emphasis added). In addition, Patent Owner acknowledges that the present Petition challenges “the same claims 1–7 based on identical prior art references and substantially similar grounds.” Prelim. Resp. 1 (emphasis omitted). Thus, we find Patent Owner’s “road-mapping” concerns to be minimized based on the similarity of the unpatentability challenges between those raised in the 1197 IPR Petition and the present Petition. For these reasons, we agree with Petitioner that factors 1–3 weigh in favor of institution. See Code200, Paper 18 at 5 (“Where the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, 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.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 17–27; see Fintiv, Paper 11, 12 (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue the same invalidity grounds against the challenged claims of the ’393 patent in the parallel litigation [or] any 14 grounds that could have been reasonably raised in this petition” (Pet. 85)7, we do not discretionarily deny institution under Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“At the outset, we note that the exercise of discretion in Advanced Bionics did not turn on mere citation in an IDS of the art asserted in the petition. Rather, the Board’s exercise of discretion in that case turned on the Examiner’s application and discussion of that art. Specifically, the Board 18 found in Advanced Bionics that the asserted art, Zimmerling, “is the same art previously presented to the Office” because “the Examiner rejected [the claims] as anticipated by Zimmerling” and “Zimmerling was discussed during prosecution.” Advanced Bionics, Paper 6, 13. In other words, the criteria adopted by the Board for denying the petition in Advanced Bionics included not only the fact that the art was made of record, but also the fact that it was applied and discussed during prosecution. Anything less disregards the express reasoning behind the Board’s exercise of discretion in that case. Here, Patent Owner has not shown that any Petitioner’s cited art (i.e., Willner, Park, Schoenith, Kessler, Hirschman) was applied by the Examiner or discussed during prosecution. Instead, during examination of the ’393 patent, the record shows that the Examiner allowed the pending claims over “Wu (2006/0252537) in view of Willis (2014/0274394).” Ex. 1009, 26–29. In doing so, the Examiner stated that a “[g]ame controller with structural bridge is well known in the art” (id. at 27), but found that “Wu in view of Willis is silent on” the subject matter claim 1. See id. at 27–28 (quoting the subject matter of independent claim 1 in its entirety). However, on this record, Petitioner demonstrates that the Examiner overlooked the combination of Willner and Park’s teachings of the limitations that were the basis for allowing the challenged claims. Id. As discussed in more detail below, Petitioner’s evidence demonstrates a reasonable likelihood that at least independent claim 1 of the ’393 patent is unpatentable over the combination of Willner and Park. See Pet. 19–41 (citing Exs. 1002, 1003, 1004).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Petitioner has shown sufficiently that the combination of Willner and Park teaches all limitations of claim 1. Petitioner also has put forth sufficient reasons for combining these references with a reasonable expectation of success. Pet. 20–21 (citing Ex. 1002 ¶¶ 133–139, 150–157; Ex. 1003 ¶ 50; Ex. 1004 ¶¶ 39–46). For example, Petitioner asserts that “Park’s adjustable bridge ‘would greatly expand the number of devices that [Willner’s] product would support, leading to the predictable result of having a larger base of customers.’” Id. at 20 (citing Ex. 1011, 19; Ex. 1018, 185 Ex. 1003 ¶ 138). Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Willner and Park.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,391,393 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 16, 2023 · IPR2023-00745 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–22 for 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
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. 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) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. This proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. Petitioner’s definition is consistent with both the scope of the claimed invention and the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this Decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the terms “embedded” (recited in claims 1, 9, and 15), “lead” (recited in the independent claims), “pad” (recited in claim 1 and some of its dependent claims), and “pocket” (recited in dependent claim 8). Pet. 7–12. Patent Owner, at this time, “discerns no need to construe explicitly any claim language because doing so would have no effect on analyses of Masimo’s asserted grounds, and would not assist in resolving the present controversy between the parties.” Prelim. Resp. 6.” slip op. at 13
- BurdenOther
“We agree with Patent Owner that Petitioner’s citation to Mills (Ex. 1006, 5:18–19), which is “[y]et another VLSI chip . . . SRAM chip 38,” does not necessarily disclose a processor standing alone. Petitioner’s position, however, does not rely just on SRAM chip 38, but instead a VLSI comprising other circuit components, including a distinct processor. See Pet. 31 (citing Ex. 1006, 2:3–6). Petitioner first cites to Mills column 2 to support its position that “housing 12 comprises a very-large scale integrated (VLSI) circuit chip that includes an ‘ECG signal and abnormal event detection circuitry, analog-to-digital (AD) and digital-to-analog (DA) conversion circuitry, memory and processor circuitry.’” Id. (quoting Ex. 1006, 2:3–6). Petitioner next relies on Mills’ disclosure that “microprocessor and associated electronics, including firmware executed thereby, employs a digital bandpass filter reliably to detect ECG signals.” Id. (quoting Ex. 1006, 2:20–23). Petitioner next cites to Mills (Ex. 1006, 4:55–5:3), which describes “circuitry shown schematically in FIG.4, including on [PCB 50’s] bottom side a microcontroller (with integral ROM) chip 42.” Pet. 31. It is unclear from this citation whether Petitioner is relying on microcontroller 42 (on PCB 50’s bottom side) as a processor because Petitioner then quotes Mills’ discussion of SRAM chip 38, which states “that the VLSI is surface-mounted on the top side of printed circuit board (PCB) 50.” Pet. 31 (quoting Ex. 1006, 5:18–19). We understand Petitioner’s position as relying on the “very-large scale integrated (VLSI) circuit chip that includes” several components, including “memory and processor circuitry.” Pet. 31 (quoting Ex. 1006, 2:3–6). Notably, this section of the specification is labeled, “Background and Summary of the Invention,” and the paragraph describing this VLSI circuit chip is “summarizing the invention.” Ex. 1006, 1:7–8, 1:60. This VLSI circuit chip does not appear to us to be the same as VLSI SRAM chip 38, which is characterized by Mills as “[y]et another VLSI chip.” Ex. 1006, 5:18. Mr. Oslan testifies that “the VLSI is a processor coupled to the heart sensor (first and second electrodes 14 and 16, respectively) and is configured to receive and process the detected cardiac signal.” Ex. 1003 ¶ 65. Mr. Oslan relies on Mills’ disclosure of a microprocessor and associated electronics, including firmware employing a digital bandpass filter for detecting ECG signals. Id. (citing Ex. 1006, 2:20–23). This cited sentence of Mills further discloses characterizing ECG signals (processing) based on QRS complexes or pacer and defibrillator pulses, but ignoring noise and motion artifacts. Ex. 1006, 2:20–25. Patent Owner makes additional arguments, such as alleging that the” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 5, 2023 · IPR2023-00734 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Masimo would prevail on claims 1, 7, and 14 as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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, Paper 6 at 8.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’491 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’491 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms . . . , solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 24. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,942,491 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00774 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design of claim 1 was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner that the claimed design includes such a feature. We note that there is some potential ambiguity in Petitioner’s construction as to that feature of an outermost continuous circle as between the three colorized figures reproduced on pages 12 and 13 of the Petition (and also reproduced above in § I.C.1). It would seem, however, that the colorized figure on page 13 of the Petition appears to suggest an outer circle in identifying the “Chamfered Edge” and the “Vertical Edge” as claimed features. See Pet. 12. Because we think that the “outermost continuous circle” is a claimed feature of the ’279 patent, we adopt the claim construction that is advanced by Patent Owner as clearly noting the presence of such a feature. See, e.g., supra § I.C.2. We note, however that the outcome of this proceeding would ultimately be the same even were we to adopt Petitioner’s claim construction. That is so because (1) Petitioner’s construction also appears to recognize the outermost continuous circle, and (2) for reasons that are discussed at length below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution irrespective of any claim construction.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessment. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33) the arc-shaped portions of the ’279 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’279 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the design of the ’279 patent. In that respect, we find credible Patent Owner’s argument that “Paulke’s features provide an appearance of two separate, opposed shapes that differs prominently from the ’279 patent’s arches that evoke an overall concentric circle appearance.” Prelim. Resp. 31 (citing Ex. 2001 ¶¶ 64). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’279 patent.5 In our view, the above-noted differences in overall appearance as between Paulke and the ’279 patent convey that Paulke is not “basically the same” as the claimed design of the ’279 patent so as to be regarded as a proper Rosen reference. See In re Rosen, 673 F.2d at 391.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find persuasive Patent Owner’s arguments, and the authority underlying those arguments, in casting doubt as to the propriety of the reasoning for combining Mendelson and Chung with Paulsen that are divorced from consideration of ornamental or visual appearance.” slip op. at 29
Claim construction§ 103 obviousness
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.