- Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision
Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20
Patent outcomesUS 8,671,132 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,671,132 - PTAB · Sep 21, 2022 · IPR2022-00457 · APJ Sally C Medley · IPR · Institution
The Board instituted IPR of claims 1–9, 11–19, 21, 23, 25, and 27, finding a reasonable likelihood that at least one challenged claim is obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Office during the prosecution of the ’440 patent in an IDS on November 24, 2014” and “the Examiner initialed Lahetkangas as being considered.” Prelim. Resp. 11 (citing Pet. 17; Ex. 1002, 69; Ex. 1011), 33. We agree that Lahetkangas was previously presented to the Office during prosecution of the ’440 patent. Ex. 1001, code (56); Ex. 1002, 69; see also Pet. 17 (Petitioner acknowledging that Lahetkangas was cited in an IDS). Accordingly, we determine that part one of the Advanced Bionics framework is satisfied. 3. Part Two of the Advanced Bionics Framework Patent Owner asserts that Petitioner has failed to show material error by the Examiner during prosecution. Prelim. Resp. 51. We disagree. As Petitioner points out, although the Examiner considered Lahetkangas in an IDS, Lahetkangas was not discussed in any Office Action or Response. Pet. 17–18. We find that Lahetkangas was not extensively evaluated during examination and was not the basis for a rejection. Petitioner has presented a sufficient showing that the Examiner overlooked disclosures in Lahetkangas that render obvious the challenged claims. See infra. We, therefore, agree with Petitioner that the Office erred in a manner material to the patentability of the challenged claims. Pet. 18–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’440 patent. See Pet. 3–4 (citing Ex. 1003 ¶ 70). Dr. Kakaes states that a person having ordinary skill in the art (POSITA) “would be someone who had a Master’s degree in Electrical Engineering, Applied Mathematics, Computer Science, Physics or equivalent.” Ex. 1003 ¶ 70. Citing Dr. Kakaes, Petitioner further states that the POSITA would have also had “three to five years of experience working with wireless digital communication systems” and that “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For purposes of this Decision, we need not expressly construe any claim term. 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)). E. Asserted Obviousness of Claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Claim 18 depends from claim 11 and includes a similar limitation. Petitioner provides reasons for employing Wang’s “extended or aggressive MCS table (i.e., a second MCS table).” Pet. 65–70. We have reviewed Petitioner’s showing for dependent claims 8 and 18 and find such showing sufficiently persuasive at this stage of the proceeding. Id. Patent Owner does not contest claims 8 and 18 separately. Prelim. Resp. 63–64. We conclude that, based on the totality of the arguments and evidence currently in the record, Petitioner has sufficiently shown, for purposes of institution, that Lahetkangas and Wang with or without LTE TS 36.213 teach or suggest the limitations of claims 8 and 18, and that a person of ordinary skill in the art would have had reason to combine the references in the manner Petitioner proposes. Accordingly, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that challenged claims 8 and 18 would have been obvious over Lahetkangas and Wang with or without LTE TS 36.213.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,509,440 - PTAB · Sep 7, 2022 · IPR2022-00337 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–40 on all petitioned grounds, finding a reasonable likelihood of success on the §103 challenges, including obviousness over Bao and Feuersanger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–40 in the ’655 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As also explained in our patentability analysis below, Petitioner demonstrates a reasonable likelihood of prevailing in proving the challenged claims unpatentable as obvious over Kwon. See Pet. 48–83; infra §§ IV.F.2–IV.F.4. In doing so, Petitioner demonstrates that the Examiner erred in a manner material to the patentability of challenged claims when (1) rejecting the claims only due to obviousness-type double patenting and (2) failing to appreciate that Kwon ’790/Kwon teaches the claimed subject matter. See Ex. 1002, 134–41 (rejecting the claims only due to obviousnesstype double patenting and citing Kwon ’790 without explanation), 192–99 (allowing the claims after terminal disclaimer filed); Ex. 1003 ¶¶ 304–520; infra §§ IV.F.2–IV.F.4. Because Petitioner persuasively shows on this record that Kwon teaches the claimed subject matter, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 16
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The descriptions of an ordinarily skilled artisan articulated by Petitioner and Patent Owner differ mainly in the educational level, i.e., “at least a Bachelor’s degree” according to Petitioner and “a Bachelor’s degree” according to Patent Owner. Pet. 6; Prelim. Resp. 8; see Ex. 1003 ¶ 20; Ex. 2001 ¶ 17. Based on the current record and for purposes of institution, we accept Patent Owner’s description of an ordinarily skilled artisan as consistent with the ’655 patent and the asserted prior art. If the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner “agrees with Petitioner that no claim terms require an express construction for the purposes of this proceeding.” Prelim. Resp. 9 (citing Pet. 6). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,454,655 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jul 26, 2022 · IPR2021-00472 · APJ Sally C Medley · IPR · Final written decision
Claims 1–5 and 7–13 are unpatentable under §103 as obvious over the listed combinations of Gundlach, Lee, and the additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Jeremy Cooperstock, who testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s degree in an academic area emphasizing electronical engineering, mechanical engineering, or a similar discipline, and at least two years of experience in the field working with electronic devices” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 7 (citing Ex. 1003 ¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid Toliyat, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA10 is somewhat different than mine; however, my opinions in this declaration would be the same regardless of whether or not my description or Dr. Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1, 2, 8, 9, and 11 over Gundlach and Lee” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artNon analogous artDecided for petitioner
“the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fec. Cir. 2015). A reference is analogous art if either of these two tests is met. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). The Federal Circuit has indicated that the scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of analogous art broadly . . . .”). In determining the field of endeavor, we look to the ’077 patent’s written description and claims, including the structure and function of the invention. Bigio, 381 F.3d at 1326. And, we agree with Petitioner that in defining the field of invention, and in determining the relevance of Brown to the obviousness inquiry, here a broad approach should be taken. Pet. Reply 15. Indeed, the Supreme Court provided guidance in determining the applicability of a reference’s teachings in an obviousness inquiry. In KSR International Co. v. Teleflex Inc., the Court explained that if a feature has been used to improve one device, and a person of ordinary skill in the art would have recognized that it would improve a similar device in that field or another, implementing that feature on the similar device is likely obvious. 550 U.S. at 417. Here, we agree with Petitioner that the appropriate scope of the field of endeavor of the claimed invention is directed to switching devices and electronic devices. Pet. Reply 15 (citing Ex. 1001, 4:8–16, 17:63–65, 21:39–40); PO Resp. 59–60 (“[t]he field of endeavor of the ’077 patent is, broadly, speaking, magnetic switching devices that activate deactivate or hibernate an electronic device”). We further agree with Petitioner that “Brown’s headset falls into the general descriptive category of ‘electronic device.’” Pet. Reply 15. Patent Owner fails to show sufficiently that Brown is not within the same field of endeavor as the ’077 patent. PO Resp. 59. Although Brown may describe optical user interfaces for headsets, its teachings are relevant to the broad field of endeavor which includes electronic devices such as headsets. Because we find that Brown is from the same field of endeavor as the claimed invention and provides relevant teachings to a person of ordinary skill in the art at the time of the invention, we need not consider Patent Owner’s arguments regarding whether Brown is reasonably pertinent to the particular problem with which the inventors are involved.” slip op. at 54
Patent outcomesUS 10,562,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,562,077 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00335 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 16–17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would be someone with either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA7 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.8 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42–44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of 8 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“immediately above are new and too late. PO Reply 8–9. We disagree. Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)10 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–26. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27
Patent outcomesUS 10,259,020 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,020 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00338 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–13 are unpatentable as obvious: claims 1–8 over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). In the Institution Decision, we considered the subject matter of the ’320 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design, and could have obtained similar knowledge and experience through other means. In view of the relevant technology and claims of the ’320 patent, as well as the technology of the asserted prior art, we adopt the same qualifications as those identified in the Institution Decision. We note that even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no express claim construction is required in order to assess the grounds presented and the ordinary and customary meanings of the terms should be used. Pet. 17; see generally Pet. Reply. Patent Owner similarly states that no express construction is required, and the ordinary meaning of the terms may be used. PO Resp. 4; see generally PO Sur-Reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Additionally, Patent Owner asserts that Petitioner “conflates Kim’s disclosure of coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Sur-Reply 5. We do not agree with this assertion. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” discloses what Petitioner contends it does, that is, that the sub-device may be coupled to either side of the second body. Although Dr. Horenstein testifies that the sub-device can only be coupled to the top of the second body in a closed position, his explanation is not sufficient as to why that is so, particularly in view of Kim’s disclosures. See Ex. 2004 ¶¶ 42–44. For instance, Dr. Horenstein testifies that certain portions of Kim, such as those describing Figure 15B, show the coupling of sub-device on top of the second body, but this testimony is overly limited and inconsistent with other of Kim’s disclosures because it fails to account for other disclosures, as discussed above. Id. ¶ 44. Thus, we do not afford his testimony substantial weight. Instead, we credit Dr. Kiaei’s testimony on the issue because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 23
- Strike new argumentNew argument consideredDecided for petitioner
“A petitioner may rely on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with this issue in the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is responsive to Patent Owner’s arguments, which are based on an overly limited view of the Petition and Kim.9 For the above reasons, we 9 We note that Patent Owner did not request to submit new testimony in support of its Sur-Reply to rebut Dr. Horenstein’s testimony. determine that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 28
Patent outcomesUS 10,589,320 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,589,320 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00337 · APJ Sally C Medley · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1–8 as obvious over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA8 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.9 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, 9 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“advocating a Figure A solution that did not allow the cover of the watch-type device to properly close due to sandwiching sub-device 300.” PO Resp. 8 (citing Ex. 2004 ¶ 48). Patent Owner also argues that such a configuration as shown in Figure A would be unattractive, large, and ill-suited for its purpose. Id. at 8–9. Patent Owner’s arguments are premised on an overly limited view of the Figure A embodiment as it would be interpreted in the view of one of ordinary skill in the art. Kim broadly states that its embodiments “may be used singly and/or by being combined together.” Ex. 1010 ¶ 179. Consideration of the combination depicted in representative Figure A would reasonably have to “account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016). For the reasons discussed above, Kim discloses not only general combination of embodiments, but, more specifically, describes that first and second bodies are coupled and that the sub-device may be on either side of the second body, which supports the depiction of representative Figure A. Representative Figure A Would Have Been Obvious In addition to Kim’s description of representative Figure A, Petitioner also provides a showing, which we agree with, that the representative Figure A embodiment would have been obvious. Pet. 23–26. Specifically, Petitioner contends that, to the extent that Patent Owner argues that Kim does not disclose Figure A, such an embodiment would have been obvious to a POSITA in view of Kim’s folder-type embodiments (Figure 11B) which are similar and closely related to the watch-type embodiment (Figure 15A). Id. at 23–24 (citing Ex. 1010, Figs. 11B, 15A; Ex. 1002 ¶¶ 87–95). Petitioner explains how in both embodiments (folder-type and watch-type) the main device comprises a first body and a second body connected to each other by a hinge so that the two bodies can open or close in a folding manner, and that with respect to both embodiments, Kim also describes using coupling members 510 (such as magnets) to detachably couple the sub-device to the main device. Id. at 23–25 (citing Ex. 1002 ¶¶ 88–90; Ex. 1010 ¶¶ 212, 218, 220, 261). Petitioner contends that a “POSITA would have recognized that because of the similarities between Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to Figure 11B could have been adapted and applied to detachably couple sub-device 300 to the second body 100b of the watch-type embodiment in the manner shown in Figure A.” Id. at 25 (citing Ex. 1002 ¶ 90). Petitioner further contends that doing so is suggested by Kim itself, because Kim states that the embodiments “may be used singly and/or by being combined together.” Id. (citing Ex. 1010 ¶ 179). Petitioner argues that a POSITA having reviewed Kim’s Figure 11B embodiment would have recognized the feasibility and desirability of modifying the embodiment of Kim’s Figure 15 to detachably couple sub-device 300 to the second body 100b using coupling members 510. Id. (citing Ex. 1002 ¶¶ 90–95). Petitioner further provides reasons for making the modification. Id. at 25–26 (citing Ex. 1002 ¶¶ 93–95). Patent Owner makes several arguments why Petitioner’s Figure A “is not obvious.” PO Resp. 9–35. For the reasons that follow, we determine that such arguments do not undermine Petitioner’s persuasive showing.” slip op. at 23
Patent outcomesUS 10,562,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,562,077 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00336 · APJ Sally C Medley · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA9 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.10 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that may be so and we find his testimony lacking factual support and inconsistent with what Kim describes. See 37 C.F.R. § 42.65 (expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight). Thus, we do not give his testimony substantial 10 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“immediately above are new and too late. Sur-reply 8–9. We disagree. A petitioner is not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)12 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein 12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27
Patent outcomesUS 10,259,021 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,021 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, with the first part being 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,992,322 - Micron Technology, Inc. v. Vervain, LLCInstitutedPTAB · Apr 11, 2022 · IPR2021-01550 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–12, finding a reasonable likelihood that claims 1–9, 11, and 12 are obvious over Dusija and claim 10 over Dusija and Sutardja.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2023. Ex. 1035, 3. The projected statutory deadline for a final written decision in this case is in April 2023. Because the trial date in the District Court Litigation is only a few months before the projected statutory deadline for a final written decision in this case, we determine that the second Fintiv factor slightly favors exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived, even if they were presented in the Preliminary Response.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (quotation omitted). in the technology field of the 300 patent would be a person with at least a Bachelor of Science degree in electrical engineering, computer engineering, or a closely related field, along with at least 3–5 years of experience in the design of non-volatile memory devices. An individual with an advanced degree in a relevant field would require less experience in the design of non-volatile memory devices. Pet. 31. Patent Owner’s declarant Dr. Sunil Khatri provides the same description of a person of ordinary skill in the art. Ex. 2001 ¶ 22; see also id. ¶ 23 (noting agreement with Petitioner’s declarant on this definition). We adopt Petitioner’s description for purposes of this Decision, except that we delete the qualifier “at least” to prevent the description from extending beyond the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018).2 This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including 2 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule). constructions for the phrases “data integrity test,” “comparing the stored data to the retained data,” and the term “periodically.” Pet. 23–28. Patent Owner argues that each phrase should have its plain and ordinary meaning. Prelim. Resp. 17–23. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,950,300
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.