- PNC Bank, N.A. v. United Services Automobile AssociationInstitution deniedPTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356,1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,402,638 - PNC Bank, N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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))).” slip op. at 14
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,402,638 - PTAB · Oct 20, 2021 · IPR2021-00827 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 3 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). We determine that Petitioner has not shown a reasonable likelihood of prevailing on any claim.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Patent Owner contends that the Petition fails to name all real parties- in-interest (“RPIs”) as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 72– Petitioner’s SEP Video Codec Zone members as RPIs. Id. Because we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing the unpatentability of any challenged claim, we do not reach this issue. C.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s articulation of the level of ordinary skill, but delete the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert, and delete “or similar advanced post-graduate education in this area” also to keep the level from potentially extending into the realm of an expert. What remains appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). For purposes of this Decision, we find the level of ordinary skill in the art corresponds to that of one who had, on or about April 9, 2010, the level of: (1) an undergraduate degree in electrical engineering or computer engineering or a closely related scientific field, such as physics or computer science; (2) a working knowledge of video coding techniques; and (3) two years of experience with video processing. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“prediction value” Patent Owner asserts that “prediction value” should be construed to mean “a value generated in an intra-prediction process for determination of a prediction block.” Prelim. Resp. 8. We agree. Claims 1 and 3 each recite: when the intra-prediction for the current block is performed, the processor determines whether to apply a second filter to a prediction value of the current block . . . , and applies the second filter to the prediction value of the current block if, as a result of the determination, the second filter is determined to be applied Ex. 1001, 12:18–25, 12:46–53 (emphasis added). The language links “prediction value” to intra-prediction such that it is a predicted value generated inside an intra-prediction process performed on a current block to determine a prediction block for the current block. slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,781,448
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.