- PTAB · Dec 16, 2024 · IPR2024-00891 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 23–46 on all grounds, finding a reasonable likelihood that Shin anticipates at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“Under the circumstances presented here, we find that discretionary denial is not warranted for the Petition in this case due to the parallel petition in IPR2024-00890. Given the large number of claims asserted by Patent Owner against Petitioner in the district court litigation, we do not consider two petitions asserting two single-reference grounds against forty claims including five independent claims to be excessive. The CTPG provides that assertion of a large number of claims in litigation is one circumstance under which more than one petition may be necessary. CTPG at 59. Furthermore, the two petitions challenge different claims of the ’031 patent. Claim length and subject matter complexity also justify the additional briefing presented by two petitions for which Patent Owner has been afforded the same amount” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(see 37 C.F.R. § 42.4(a)) that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims on the merits, so we grant institution of the petitioned inter partes review. See 35 U.S.C. § 314(a). We decline to exercise our discretion to deny institution because of the parallel petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSA”) as of the asserted priority date would have had a bachelor’s degree in biomedical engineering, chemical engineering, chemistry, or a related or equivalent field, and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience. Such experience could include either formal coursework in signal processing, computer science, or electrical engineering, or it could also be obtained during on-the-job experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. A POSA may have been part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians. The prior art also evidences the level of skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since Petitioner does not propose any alternative construction for “drift profile” or construction of any other term in this proceeding, there is no dispute over claim terms that we need to decide to resolve. Accordingly, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). We note in passing, however, that Patent Owner’s stated definition of “drift profile” in its Preliminary Response seems to comport both with Petitioner’s proposal in the district court litigation4 as well as how the ’031 patent’s specification uses the terms “drift” and “profile” in the context of “sensitivity.” See Ex. 1001, 21:36–48 (discussing “drift”), 210:39–60 (discussing “profile”).” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 16, 2024 · IPR2024-00890 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR for claims 1–2, 4, 6–15, and 20–22 because the petition showed a reasonable likelihood of prevailing on anticipation by Shin.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“In IPR2024-00891, Petitioner filed on the same date a parallel petition to challenge claims 23–26 of the ’031 patent on grounds similar to those asserted in this proceeding. In its “Explanation of Parallel Petitions” (Paper 3), Petitioner provides the following table to explain the claims challenged and grounds of unpatentability asserted in each petition: Paper 3, 2. Petitioner ranked the Petition filed in this proceeding as first. Id. at 3. Accordingly, we need not reach the issue of parallel petitions in this proceeding, and instead address the issue in our institution decision in IPR2024-00891.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood that each limitation of claim 1 is disclosed by Shin notwithstanding Patent Owner’s arguments. Accordingly, Petitioner has shown a reasonable likelihood to prevail in demonstrating unpatentability of claim 1 of the ’031 patent as anticipated by Shin.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art “because the Petition fails to demonstrate unpatentability even under that definition.” Prelim. Resp. 18. Petitioner’s proposed level of skill in the art is consistent with the ’031 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, on this record, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not present any dispute over the meaning of any claim term, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 11, 2024 · IPR2024-00906 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 4–6, and 8–27 on all five § 103 grounds, finding a reasonable likelihood that claim 1 is obvious over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on the current record, the weight of the evidence before us does not support a finding that that the same or substantially the same art or arguments were previously presented to the Office.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) 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.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 under 35 U.S.C. § 103 as obvious over the combined teachings of N93, Dua, and Herle.” slip op. at 68
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’241 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,445,241 - PTAB · Dec 11, 2024 · IPR2024-00907 · APJ Frederick C Laney · IPR · Institution
The Board instituted inter partes review on all challenged claims and all five §103 grounds, finding a reasonable likelihood that claim 1 is unpatentable over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(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 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“having “a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of wireless communications,” wherein “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1002 ¶ 28). Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 19. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’590 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentablePTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20
- Strike new argumentNew argument consideredGranted in part
“response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45
Patent outcomesUS 10,268,608 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,268,608 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCSome claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00976 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–16, 18, and 19 are unpatentable over Casagrande and Russ and Dow; claim 17 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Jeffay, Petitioner proposes that a” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “a first period of time” Patent Owner contends that the term “first period of time,” recited in limitation 1[d][i], would be understood “to start after transmission of the entire ‘video program’ to the DVR.” PO Resp. 5 (citing Ex. 2006 ¶ 47). Patent Owner refers to claim 1 and its recital that the video program is provided “in its entirety.” Id. (citing limitation 1[d][ii]). Patent Owner argues that “[i]n order to ‘provide said video program in its entirety’ from ‘said memory device,’ the entire ‘video program’ must be stored in the ‘memory device,’ which is only possible after transmission of the entire ‘video program’ to the DVR.” Id. (citing Ex. 2006 ¶ 47). Patent Owner contends that in light of dependent claims 6 and 14, the “first period of time” must start after the transmission of the entire video program. Id. at 5–6 (quoting claim 6 (“wherein said first period of time is a period of time that is less than one week from said transmission of said video program”); claim 14 been transmitted.”)). Additionally, Patent Owner refers to the prosecution history of the ’710 patent: a digital video recorder (“DVR”) that stores a video program and plays at least a portion of the video program back at a later time (e.g., a time more convenient to the user of the DVR, etc.) . . . In a first state, the DVR is configured to play the program as it was originally recorded (e.g., with both the program and auxiliary data). In a second state, the DVR is configured to play the program data without the auxiliary data (or a portion thereof) . . . To this end, the claimed invention provides that if the video program is being watched within a first period of time (e.g., within a day or two of the video program being transmitted to the DVR, etc.), then the video program will be played back in its entirety (e.g., including both program and auxiliary data). PO Resp. 6 (quoting Ex. 1003, 108–109). Based on this passage, Patent Owner asserts that the “first period of time” must start after transmission of the entire video program. Id. (citing Ex. 2006 ¶ 49). Patent Owner argues that the referenced statement in the prosecution history is “clear and unambiguous.” PO Sur-reply 3. Petitioner contends that Patent Owner’s interpretation of the term” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“specific reasoning to combine Casagrande and Russ to be persuasive. See PO Resp. 23–24. Dr. Jeffay testifies that “Casagrande acknowledges that one concern expressed by content providers is the decreasing value of interstitial content over time, particularly because commercials may become less relevant to the user or may expire.” Ex. 1002 ¶ 117 (citing Ex. 1006, 10:5–13 (“[T]he supplemental content 602 may also be selected to replace a commercial with a timelier commercial from the same advertiser. For example, a department store may have originally advertised a sale during the original broadcast of the show, but that particular sale may have since ended.”)). Accordingly, the evidence supports that Casagrande identifies that the earlier playback of commercials has value, which provides support” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“ix. Conclusion Patent Owner presents no evidence of objective indicia of” slip op. at 39
Patent outcomesUS 8,929,710 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,929,710 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00977 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Casagrande, Russ, and Miller; the Board did not reach the Dow grounds.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill We consider the asserted grounds of unpatentability in view of the” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“25), and the doctrine of claim differentiation, support Petitioner’s arguments (Reply 3–4) regarding the “first period of time.” Accordingly, we do not adopt Patent Owner’s proposed construction. We use the plain and ordinary meaning of the term here.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“agree, Russ discloses that trick play functionality is restricted for only a specified period of time. See Ex. 1008 ¶¶ 34–35. Accordingly, we find support for Dr. Jeffay’s testimony that, in the view of one of ordinary skill in the art, Casagrande in combination with Russ teaches that after the expiry of the first period of time there is a second period of time in which commercials may be skipped. Ex. 1002 ¶¶ 148–151; see also Pet. 32. Additionally, we agree that Petitioner has demonstrated a rationale to combine Casagrande and Russ with a reasonable expectation of success of the combination, as discussed above in the discussion of limitation 1[a][i].” slip op. at 63
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 9,538,122 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,538,122 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art 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 neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 20, 2024 · IPR2024-00860 · APJ James A Tartal · IPR · Institution
The Board denied institution on claims 1–9, 13–19, and 28–30 under § 314(a), finding a second petition unwarranted after instituting review of the same claims in IPR2024-00859.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“references, and therefore presents materially different grounds for challenging the patent, even though both petitions challenge all claims of the ’625 patent that Patent Owner has asserted against Petitioner in the district court litigation.” Id. at 2. To the contrary, both petitions rely, in part, on the same art, Lundquist, indicating that there is a degree of overlap between the two petitions. Moreover, the mere fact that Petitioner is relying on Rao only in the ’860 Petition fails to show any rational reason a second petition is necessary. Remarkably, rather than suggest Rao is materially different or superior over the art asserted in the ’859 Petition for any reason relevant to our patentability analysis, Petitioner instead concedes that Rao is more problematic for Petitioner because Rao is only prior art if Petitioner can show that the ’625 patent is not entitled to its earliest priority date. See Exp. 1–3 (explaining that Patent Owner “may challenge whether Rao is prior art because of a dispute about the effective filing date of the ’625 patent”). We agree with Patent Owner that, outside of a potential priority dispute, Petitioner makes no comparison between the references relied on in the two parallel petitions in regard to the patentability issues raised and, specifically, does not “attempt to explain why the disclosures of Rao are materially different and not cumulative of the references in [the ’859 Petition].” Exp. Resp. 2 (citing See Square, Inc. v. 4361423 Canada Inc., IPR2019-01626, Paper 14 at 9 (P.T.A.B. Mar. 30, 2020) (explaining that a petitioner is not entitled to file two petitions against the same claims of the same patent by merely implicating a priority issue). In short, Petitioner’s assertion that Rao may be more problematic for Petitioner to rely upon as” slip op. at 11
Discretionary denialPatents in suitUS 11,510,625 - PTAB · Nov 20, 2024 · IPR2024-00859 · APJ James A Tartal · IPR · Institution
The Board instituted review of claims 1–9, 13–19, and 28–30 on all petition grounds after finding a reasonable likelihood that Pace anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In evaluating the exercise of discretion to deny institution under Section 325(d), we use the following two-part 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7–8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates 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.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Legal Standards for Anticipation and Obviousness A patent claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art is “cursory,” “unsubstantiated,” and “so vague as to be effectively meaningless.” Prelim. Resp. 26. According to Patent Owner, the Petition cites no evidence to substantiate the level of skill in the art, and Dr. Riviere’s declaration parrots the language in the Petition. Id. Although Patent Owner disputes the sufficiency of Petitioner’s definition of a person of ordinary skill in the art, Patent Owner does not propose a level of ordinary skill in the art of its own. See generally Prelim. Resp. Moreover, Patent Owner fails to present evidence that shows the level of ordinary skill in the art is different from Petitioner’s proposal, or that Petitioner’s proposal is in any way inconsistent with the level of skill reflected in the ’625 patent and the asserted references.8 We find that the ’625 patent and the cited prior art references reflect” slip op. at 30
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,510,625
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.