- PTAB · Dec 15, 2023 · IPR2023-00941 · APJ Jameson Lee · IPR · Institution
The Board instituted inter partes review of claims 1–18 on the asserted §103 ground over Kimura, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion For reasons discussed above, Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of claim 7 over Kimura. 4. Dependent Claims 9–12 Claims 9–12 each depend, directly or indirectly, from claim 7. Ex. 1001, 9:59–10:19. Petitioner specifically addresses all of them in detail. Pet. 56–62. Petitioner’s assertions are supported by the cited evidence, and Patent Owner does not present any argument additional to those it presents for claim 7. Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of each of claims 9–12 over Kimura.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“In particular, we are persuaded preliminarily that an ordinarily skilled artisan would have known to implement a version of the pixel circuit shown in Figures 33A–33E of Kimura with all pMOS transistors. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are sufficiently persuaded that there is general interchangeability of nMOS and pMOS transistors used as switching transistors. Thus, we are sufficiently persuaded, for institution purposes, that it would have been obvious to one of ordinary skill in the art to make a modification of Kimura’s embodiment shown in Figures 33A–33E to use pMOS type transistors for all switching transistors in the pixel circuit, which leads to an all pMOS version of Kimura’s Figure 33 embodiment.6” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“one of the first or fourth transistor to pMOS type transistor is, if anything, a teaching away from using only pMOS transistors in the embodiment shown in Kimura’s Figures 33A–33E. Prelim. Resp. 28–29. We disagree. That Kimura describes a benefit for making the first and fourth transistor of different polarity types does not constitute a teaching away from having them both being of the same polarity type. A reference teaches away from a claimed invention if it criticizes, discredits, or otherwise discourages modifying the reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has stated: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away . . . because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. Accordingly, in order for there to be teaching away, the statement in Kimura must rise above merely assessing the advantages and disadvantages among viable alternatives. It does not. The Federal Circuit explained that “[c]hoosing one alternative necessarily means rejecting the other,” and that “[t]his interpretation of our case law [treating the choosing of one alternative as a teaching away from the other alternative] fails.” Fulton, 391 F.3d at 1201. Thus, we do not find that Kimura teaches away from making the first and the fourth transistor of the same polarity type.” slip op. at 25
- Expert testimonyPetitioner expert creditedDecided for petitioner
“If the design need is for a transistor to be used as a simple on/off switch, then either an nMOS transistor or a pMOS transistor can be chosen – since, as shown in the figure from Kang and Leblebici 2003 [Ex. 1011] above [in ¶ 56 of the same Declaration], each can function as a simple on-off switch. As the primary operational difference between nMOS and pMOS (when a simple switch is desired) is that the on/off characteristics are the opposite of each other – and the on-off signals to be applied must be altered (i.e., reversed as it were) to account for this. In particular, as described in Section VII.A.1, nMOS devices turn on in response to a “high” voltage on the gate terminal and turn off when a “low” voltage is applied. This is known in the art as “active-high” signaling. pMOS transistors are just the opposite – they turn on when a “low” voltage is applied to the gate terminal and turn off in response to a “high” voltage on the gate. This is known in the art as “active-low” signaling. Changing the polarity of a switching transistor (from nMOS to pMOS or vice versa) would require changing the polarity of the gate signal to achieve the same functionality, but doing so was easy and well-known to a POSITA. Id. ¶ 57 (the reference to Kang and Leblebici 2003 identifies a figure which illustrates a CMOS inverter having an nMOS switch and a pMOS switch). The above-quoted testimony of Dr. Foty is not merely conclusory. Rather, it relies on the disclosures of Kang, Leblevici 2003, and Kimura. It also relies on the level of ordinary skill in the art and explains specifically how the change form nMOS to pMOS switching transistor, and vice versa, would be done. Also, notably, Patent Owner does not assert that implementing a switching transistor by a pMOS transistor exceeds the level of ordinary skill in the art. We also preliminarily credit the testimony of Dr. Foty because it currently stands unrebutted.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,414,599 - Intel Corporation v. Bitmicro, LLCInstitutedPTAB · Dec 15, 2023 · IPR2023-00783 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–3, 6, 10–12, and 15 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Nishida, Harari, and Nakao.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Petitioner identifies itself, Intel Corporation, as real party-in-interest. Pet. 90. Patent Owner identifies itself, BitMicro, LLC, as the real party-ininterest. Paper 3, 2. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’939 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working on computer system architecture and power management circuits, or an equivalent combination of education and experience.” Pet. 7 (citing Ex. 1003 ¶ 90). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. We regard Petitioner’s definition as consistent with the ’939 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On the record before us, we have not been directed to any dispute between the parties that § 112 ¶ 6 does not apply to the “means for” clauses recited in the challenged claims. Where claim language may be construed according to 35 U.S.C. § 112(f) (or its predecessor, § 112 ¶ 6), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). In accordance with these requirements, Petitioner provides constructions for all the means-plus-function clauses in the challenged claims. See Pet. 7–15. Where applicable, Petitioner asserts its proposed constructions are consistent with constructions made by the district court in related litigation. Id.; see also Ex. 1018. Patent Owner contends “the Board need not engage in any pre- institution claim construction,” does not substantively address or contest Petitioner’s proposed claim constructions, and does not propose any constructions itself. See Prelim. Resp. 8–10. Based on the record before us, we adopt, for purposes of this” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“3. “means for deactivating” (claim 10) Petitioner proposes that this term, recited in claim 10, should be construed consistent with the district court construction as means-plus-function, with the recited function being “deactivating the plurality of super capacitors to cut off power to the computing engine based upon the plurality of super capacitors discharging to a predetermined level” and the corresponding structure as “a down-converter (and equivalents), and switches, transistors, gates, etc. that are generally known in the art.” Pet. 10–12. Patent Owner does not provide a construction or any specific arguments directed to this limitation. See Prelim. Resp. 8–10.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,496,939 - PTAB · Dec 14, 2023 · IPR2023-00978 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 across all asserted grounds, finding a reasonable likelihood that both claims are obvious over Vornefeld and Atsuta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the 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 ’931 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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 Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Patent Owner’s allegations appear to be mere speculation. Thus, we determine that Patent Owner has not demonstrated that there is a legally significant relationship between the two petitioners that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Vornefeld is art previously presented to the Office, Petitioner’s respective challenges rely heavily on Atsuta and Goldburg for teachings pertaining to the limitation added by dependent claims 28 and 29, the only challenged claims in this case. Patent Owner does not assert that Atsuta was previously presented to the Office. Patent Owner implies that Goldburg was previously presented to the Board in the prior IPR, arguing that “[prior petitioner] Sprint specifically relied on Goldburg as part of its expert declaration in the prior IPR to show the state of the art.” Prelim. Resp. 50. Petitioner replies that, “[w]hile [Patent Owner] offers that Goldburg was cited (for background) in a declaration in the Sprint IPR . . . , [Patent Owner] fails to acknowledge that Goldburg was not (i) an exhibit in the Sprint IPR, (ii) mentioned or applied in the Sprint Petition, or (iii) addressed in the final written decision.” Pet. Reply 3 (citing Exs. 1009, 1014). Patent Owner does not dispute Petitioner’s representations. See PO Sur-reply 3 (arguing that Petitioner “quibbles over whether Goldburg was a formal exhibit before the Board in the prior Sprint IPR,” but not asserting that Petitioner is incorrect). We find that Goldburg was not previously presented to the Board.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Intel Corporation v. Bitmicro LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00779 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that Danilak and Cornwell taught or suggested the claimed transfer-size selection limitation.
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 Tech., 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 their 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Ex. 1005 ¶ 73 (emphasis added).8 We discern no teaching or suggestion in paragraph 73 of Danilak that “the transfer size is a function of a data size of the memory transaction” or of any consideration of the “data size of the memory transaction.”” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,135,190 - Intel Corporation v. Bitmicro LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00780 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Intel did not show that Danilak and Cornwell taught or suggested the transfer-size limitation in challenged claims 45, 46, 51-54, 57, 59, 71, 72, 76, 77, 80, 82, 84-87, 92, …
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 Tech., 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 their 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working with storage systems (including storage systems made up of different types of storage devices), file management policies, and different data access patterns, or an equivalent combination of education and experience.” Pet. 4–5 (citing Ex. 1003 ¶ 57). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’190 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We determine that no terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this Decision, we give the claim terms their plain and ordinary meanings.8” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Id. at 48–49 (emphasis added). Contrary to Petitioner’s contention, we determine that Petitioner has failed to adequately and persuasively demonstrate that there is a teaching or suggestion in paragraph 73 of Danilak of “selecting a transfer size for the memory transaction, wherein the transfer size is a function of a data size of the memory transaction.” Paragraph 73 of Danilak states: Other translations that may be performed by the other translations unit 509 may include a test to ensure that the amount of configured memory reported to the host is the same as or less than the amount of physically-attached memory. Addition, if the configured page size reported to the host is different than the discovered page size in the attached devices, a translation may be performed by the other translations unit 509. For example, if the configured page size is larger than the discovered page size, the memory request may be performed to multiple flash memory devices to form a page of the configured size. If the configured page size is larger than the discovered page size multiplied by the number of flash memory devices, the request may be performed as multiple operations to multiple pages on each device to form a page of establish that paragraph 73 of Danilak teaches or suggests the “selecting” limitation. between the configured size reported to the host and the attached flash devices, the other translation unit 509 may concatenate two blocks and their redundant areas. If the organization reported to the host is narrower than the organization of the attached devices, the translation unit 509 may select a byte or bytes from the data provided by the attached devices to be output as the data for the request. Ex. 1005 ¶ 73 (emphasis added).11 We discern no teaching or suggestion in paragraph 73 of Danilak that “the transfer size is a function of a data size of the memory transaction” or of any consideration of the “data size of the memory transaction.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,135,190 - Snap Inc. v. Playvuu, Inc.InstitutedPTAB · Dec 6, 2023 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on its obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the 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”) (emphasis added). The Board’s precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) sets forth six factors that we consider as part of this balanced assessment when determining whether to use our discretion to deny institution. 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. (precedential as to § II.A)). We have considered all arguments and evidence presented by both parties as to whether we should exercise discretion and deny institution of inter partes review under Fintiv. Pet. 23–25; Prelim. Resp. 23–28; Prelim. Reply, Prelim. Sur-reply. Petitioner submitted a stipulation titled “Defendant/Counterclaimant Snap Inc.’s Sotera Stipulation,” which was filed in the co-pending district court litigation and, with the exception of the listing of the grounds in the instant proceeding, is the same as the stipulation filed in the Sotera case. Ex. 1047. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in [the co-pending district court litigation] the specific grounds [asserted in this inter partes review], or any other ground . . . that could have been reasonably raised in the IPR” (Pet. 23; Ex. 1047), we do not discretionarily deny institution under Fintiv.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“find that Cohen was previously presented to the Office and the disclosures in the art asserted in the Petition, including Chu, Sherman, Joslin, and Lei, overlap the art before the Examiner during prosecution. We do not provide further analysis of part one of the Advanced Bionics framework because determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 3.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,931,911 - Lexmark International, Inc. v. Flexiworld Technologies, Inc.Institution deniedPTAB · Nov 17, 2023 · IPR2023-00845 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Lexmark did not show a reasonable likelihood that claims 1–21 or 23–37 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information 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); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Rabbani’s testimony, Lexmark argues that a person of ordinary skill in the art “would have had at least a B.S. in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years of practical experience with printer technologies.” Pet. 18 (citing Ex. 1003 ¶¶ 48–53). Flexiworld does not contest this articulation. See generally Prelim. Resp. Because Lexmark’s articulation of the level of ordinary skill is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’402 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Lexmark argues that it “does not believe construction of any term is necessary to resolve the invalidity challenges set forth in th[e] Petition.” Pet. 18 (citing Ex. 1003 ¶¶ 46–47). Flexiworld “agrees that construction of claim terms is not necessary at this time.” Prelim. Resp. 9. At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to deny institution does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Flexiworld. Limitations 13[j] and 33[j] refer to “the attribute” with a definite article, meaning the particular attribute received in limitation 13[c] or 33[c] and used as the basis for selecting an output device in limitation 13[d] or 33[d]. See Ex. 1001, 44:10–17, 44:32–36, 45:15–25, 48:8–12. While Lexmark relies on Moore’s GPD for the “attribute” in limitations 13[j] and 33[j], Lexmark only relies on Kammer’s “user-friendly name” as the attribute in limitations 13[d] and 33[d]. Nor does Lexmark explain (1) how Moore’s GPD would be part of the step of selecting an output device in limitation 13[d] or 33[d], or (2) how Kammer’s user-friendly name would be involved in conforming the content in limitation 13[j] or 33[j]. Thus, for the first two grounds of the Petition, we determine that Lexmark has not provided sufficient reasoning to support the legal conclusion that claims 13 or 33 would have been obvious at the time of the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,609,402 - Boe Technology Group Co., Ltd. / Beijing Boe Display Technology Co. et al. v. Element Capital Commercial Company Pte. LtdInstitution deniedPTAB · Nov 15, 2023 · IPR2023-00808 · APJ Russell E Cass · IPR · Institution
The Board denied institution for claim 1 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Considering the arguments and evidence presented by the parties in light of the present record, we find that Fintiv factor 2 weighs in favor of exercising discretion to deny institution. As noted above, the District Court has set a trial date of May 20, 2024, which is about six months before the November 17, 2024, deadline for a final written decision in this IPR. As explained above, the Interim Fintiv Guidance provides that the parties may also present the most recent statistics on median time-to-trial for civil actions in the relevant district court. Interim Fintiv Guidance, 8–9. Here, the “most recent statistics” for the Eastern District of Texas are those from the 12- month period ending on March 31, 20235, which reports a median time from filing to trial of 19.0 months. Ex. 2003, 35. Applying this median time-to-trial period to the Complaint’s filing date of April 18, 2022, would put the estimated trial date in November 2023, well before the scheduled trial date of May 20, 2024. Even if we use the September 27, 2022, date of service, as Petitioner proposes, the result would be an estimated trial date of April 27, 2024, which is still before the scheduled trial date of May 20, 2024. Therefore, even after taking the delay between filing and service into account, the estimated trial date is approximately 6 months before the deadline for a final written decision in this case. Accordingly, this factor weighs in favor of exercising discretion to deny institution.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Based on the present record, we find that Ground 2 does not present a “compelling, meritorious challenge” that “would plainly lead to a conclusion” that claim 1 is unpatentable by a preponderance of the evidence, nor has Petitioner established that it is “highly likely” to prevail. See Interim Fintiv Guidance at 4. As Patent Owner points out, Koyama teaches that it is necessary to decrease the length of the power lines in order to reduce wiring resistance. See Ex. 1010 ¶ 156 (“Since the potential drop becomes larger as the size of the display becomes larger, it is necessary to make the wirings as short as possible which draw out the power supply lines.”). Based on this disclosure, Patent Owner presents reasonable argument, supported by the testimony of Dr. Silzars, that one of ordinary skill would not have been motivated to modify Koyama 168 to increase the length of the power lines by adding protrusions, which would increase wiring resistance. See Prelim. Resp. 41, 43–44 (citing Ex. 1010 ¶ 156; Ex. 2010 ¶ 111), 47–50. Patent Owner also presents facially reasonable arguments, supported by the testimony of Dr. Silzars, that one of ordinary skill would not have combined Koyama 168 with Koyama 604 and/or Koyama 671 as Petitioner proposes because: (1) Koyama 604 is directed to solving problems associated with data and scanning lines rather than power lines; (2) Koyama 604 shows the “protrusions” as being in parallel with the auxiliary wiring line rather than showing a first line with portions extending in first and second directions; (3) Koyama 671’s contact holes are not used for connecting different power supply lines to each other to reduce resistance; and (4) Koyama 671 is not directed to a protrusion on a power line for accommodating multiple contact holes. See Prelim. Resp 50–57; Ex. 122–145. Consequently, we find that Petitioner has not presented a “compelling, meritorious challenge” that “would plainly lead to a conclusion” that claim 1 is unpatentable by a preponderance of the evidence. As a result, factor 6 does not weigh in favor of institution.” slip op. at 33
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,164,267 - PTAB · Nov 14, 2023 · IPR2023-00846 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6, 7, 9, 11–13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, and 61 on all grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of obviousness or nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We apply these principles to the Petition’s challenges. B. Level of Ordinary Skill in the Art” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (POSA). Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art computer engineering, or electrical engineering (or equivalent experience) and at least two years of practical experience with printer technology. Pet. 10 (citing Ex. 1002 ¶¶ 21–25). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’233 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition states that no terms require express construction at this stage. Pet. 9–10. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner argues that Keeney renders obvious claims 1, 2, 4, 6, 7, 9, 11–13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, and 61. Pet. 13–60. As previously noted, Patent Owner did not file a preliminary response. In our analysis below, we determine that Petitioner has established a reasonable likelihood of succeeding in showing that claim 47 is unpatentable.” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,965,233 - Intel Corporation v. Bitmicro LLCInstitutedPTAB · Nov 13, 2023 · IPR2023-00785 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 5, 8, 9, 19, and 20 based on a reasonable likelihood that the Post, Wilson, and Kao combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h) Summary as to Claim 1 We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of claim 1 and, on that basis, institute inter partes review of all the challenged claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all the challenged claims.”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would possess a Bachelor of Science degree in electrical engineering or computer science, and at least two years of experience in the field of embedded system design, including booting of such systems, or an equivalent combination of education, work and/or experience.” Pet. 17 (citing Ex. 1003 ¶ 20). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art.7 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).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At bottom, neither party argues that any express claim construction is necessary in order to determine whether to institute trial. See Pet. 17, Prelim. Resp. 11–12. We agree. To the extent necessary, we will consider Patent Owner’s argument regarding “Direct Memory Access (DMA) descriptors” as recited in challenged independent claim 1 (Ex. 1001, 9:20– 21) in our analysis of the challenge to this claim.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As Post is silent about techniques for loading initialization values into its registers during boot, a POSITA would have looked to Wilson for implementation details for a register initialization technique. (INTEL-1003, ¶¶ 92-93.) * * * A POSITA would have been motivated to similarly custom design Post’s SoC 110, including control circuitry 112, to realize the benefits of performing specific predefined functions like configuring screen color and touchscreen functionality, which required initialization of configuration registers, as taught by Wilson. (INTEL-1003, ¶ 94.) Further, a POSITA would have viewed Wilson as providing a teaching, suggestion, or motivation to include initial register values in Post’s boot data because Wilson taught that register values must be loaded before a microcontroller can begin its normal operation. (INTEL-1013, 4:59-61 (“for microcontroller 100 to commence ordinary operation, it can be required that certain predefined values be loaded in the registers of register file 102”).) Wilson also taught that including initial register information along with other boot data, such as initial memory values and instructions, could improve the speed of the boot process, which a POSITA would have viewed as a further teaching, suggestion, or motivation for this combination. * * * [A] POSITA would have found this combination obvious because Wilson’s teaching of including initial register values in boot data was a known technique for solving the known problem of how to initialize processor register information at bootup (INTEL-1013, 1:25-28, 2:54-63; INTEL-1016, 555). Id. at 34–36. Patent Owner argues: Summarizing Petitioner’s theory, in order for Post’s control circuitry 112 (including processors) to begin normal operations—such as detecting and copying a POR sequencer descriptor from nonvolatile memory to RAM—control circuitry 112’s registers values must first be loaded and initialized for Post’s processors to operate normally. But Petitioner asks Post’s control circuitry 112 to perform the operations of loading boot code from NVM 120 to memory 114 before its own registers are loaded or initialized. Under these circumstances, according to Petitioner, Post’s control circuitry 112 cannot begin normal operations to pre-load its own initialized register information. Indeed, Petitioner offers no explanation how Post’s control circuitry 112 can begin the operation of loading boot code into memory 114 without the requisite initialized register values for control circuitry 114 [sic] first being loaded. This bootstrapping theory for how control circuitry 112 can prepare itself for its own normal operation is the result of a hindsight-based recreation of the challenged claim language, and fails as illogical. Prelim. Resp. 15. Patent Owner’s argument appears to be based on a misunderstanding of Petitioner’s contentions. As shown above, in Petitioner’s combination, the POR sequence descriptor would include “information to initialize configuration registers of the embedded system” as taught by Wilson in Post’s boot data. See, e.g., Pet. 37 (“In the resulting combination, Post’s boot data stored in NVM 120 included information to initialize configuration registers of SoC 110 (e.g., configuration registers of control circuitry 112).”). The Petition states that, “[a]s Post is silent about techniques for loading initialization values into its registers during boot, a POSITA would have looked to Wilson for implementation details for a register initialization technique” (id. at 34–35 (citing Ex. 1003 ¶¶ 92–93) and “Wilson . . . taught that initial values for those registers would be included as part of the boot data” (id. at 35 (citing Ex. 1013, 6:49-7:3.)). And, the Petition points to explicit teachings in Wilson of including initialization of registers in the boot process. Id. at 33 (citing Ex. 1013, 2:56–63 (“The microcontroller can require that certain specific predefined initial values are stored in one or more of the registers of the register file before the microcontroller assumes ordinary operation. . . . [T]hese initial values can be a part of boot data that is loaded in the microcontroller during a boot-up procedure.),” 5:1–4 (“The predefined values can be sent from an element external to the microcontroller (such as, for example, external communication circuit 110) to the microcontroller at time of boot up.”)). As this argument does not accurately or persuasively address the showing in the Petition, we reject it. We determine that Petitioner has shown that a skilled artisan would have been motivated to combine the relevant teachings of Post and Wilson as asserted in the Petition.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,858,084
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.