- SAP America, Inc. v. Cyandia, Inc.InstitutedPTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,751,948 - Penumbra, Inc. v. Rapidpulse, Inc.InstitutedPTAB · Feb 21, 2025 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Institution
Instituted IPR of claims 1–20 on all petitioned grounds after finding a reasonable likelihood that the challenged claims would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–20 of the ’402 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Brown, contends that a person of ordinary skill in the art (“POSA” or “POSITA”) as of the relevant date would be either: (1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its Preliminary Response, it accepts Petitioner’s proposed definition of POSA, but “reserves the right to propose its own description of a POSA if the Board institutes review.” Prelim. Resp. 8 n.3. For purposes of this Decision, we adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner provides a proposed construction for the term “[limited/limiting] to a positive amount of exit flow” recited in claims 3, 4, 13, and 15, as “the maximum permitted amount of positive exit flow in the distal direction, including no exit flow.” Pet. 15–16. Patent Owner asserts that “Petitioner’s proposed construction of ‘a positive amount of exit flow’ as ‘including no exit flow’ is plainly wrong.” Prelim. Resp. 9 (citing Pet. 15–16). Patent Owner also asserts that to the extent Petitioner “view[s] the claim term ‘flow in and out’ as encompassing only flow in or no flow at all, that would be plainly wrong too.” Id. Having evaluated the arguments and evidence before us on this record, we determine that construction of “[limited/limiting] to a positive amount of exit flow” is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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.”)). Turning to a different claim term, we note that neither party provided an explicit construction for the limitation in claim 1 of “control[ling] fluid address the proper claim construction for this term and to specifically discuss what is encompassed by “flow . . . out from the distal end.” We note that in the related cases (IPR2021-01466 and IPR2022-00608), we construed the term, “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters of fluid.” Ex. 2007, 15; Ex. 2011, 13–14. Upon review of the parties’ arguments and the evidence of record, we determine that no terms require express construction for purposes of this Decision. See Nidec Motor Corp, 868 F.3d at 1017.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c) Analysis On the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over the combined disclosures of Yang and Mullins. First, Patent Owner asserts that Yang does not disclose the limitation of “a controller . . . to control fluid flow in and out from the distal end.” Prelim. Resp. 21– 32. On the current record, we agree with Patent Owner that introducing a positive pressure pulse such as through the water hammer effect does not necessarily mean that there will be an overall distal end. See Ex. 2001 ¶¶ 53–54; Ex. 2005 ¶ 60; Ex. 2007, 51 n.12. This is especially true if an overall vacuum state is maintained in the catheter. See Ex. 2001 ¶ 56; Ex. 2007, 43; Ex. 2010, 125:11–18. Further, on the current record, we credit the testimony of Patent Owner’s declarant, Mr. Culbert, that to have flow out of the catheter’s distal end when it is in a patient, the pressure in the catheter needs to exceed mean arterial pressure. See Ex. 2001 ¶ 59; Ex. 2010, 126:15–21. Therefore, on the current record, we agree with Patent Owner that Yang may not explicitly disclose flow out from the distal end of the catheter. Whether Yang alone renders this limitation obvious may be explored further on a full trial record; however, because this limitation appears to be taught by Mullins and Petitioner has shown on this record that a POSA would have been motivated to combine the disclosures of Yang and Mullins, we are sufficiently persuaded that Petitioner has met its burden to show a reasonable likelihood that this limitation is rendered obvious by the combined disclosures of Yang and Mullins.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,406,402 - PTAB · Apr 15, 2024 · IPR2024-00029 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–8, 10–14, and 16–25 on all grounds in the Petition, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed that Sim, Doi, and Herz were not previously presented to the Office. And, the prosecution record indicates that Sim and Doi were not listed on an Information Disclosure Statement by Application nor in a List of References or in an Office Action by the Examiner. See Ex. 1002, 9–10, 20–25, 69–74, 196–197, 346–347. Petitioner’s asserted Grounds 1 and 2 rely substantially on Sim and Doi to teach the steps of the claimed system and method. Petitioner’s asserted Grounds 4, 5, and 6 substantially rely on Herz. Sim, Doi, and Herz are meaningful to the prior art combinations set forth in the Petition. Therefore, the asserted combinations regarding Sim and Doi, Sim, Doi, and Waytena, and Waytena and Herz were not previously presented to the Office. It is also not disputed that Waytena was previously presented to the Office and considered by the Examiner. The prosecution history shows that throughout prosecution, the Examiner heavily considered and relied on Waytena for rejections under 35 U.S.C. §§102 and 103 in evaluating the application of the ՚983 patent. See, e.g., Ex. 1002, 9–10, 20–24, 69–73. At this point and based on the present record, we do not discretionarily deny under 35 U.S.C. § 325(d) because Petitioner has 7 The terms “POSITA,” “PHOSITA” or “skilled artisan” refer to a person of ordinary sill in the art. reasonable likelihood that at least one of the Challenged Claims is unpatentable. PGS Geophysical, 891 F.3d at 1360. However, based on the record before us, and because we reach the same conclusion as the Examiner regarding Waytena’s teachings, we find that Patent Owner has, on this record, sufficient support for its contentions that Waytena was previously presented to the Office and the Examiner’s evaluation on the merits regarding Waytena’s teachings was not in error.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest or comment on Petitioner’s definition of the level of ordinary skill in the art or offer Patent Owner’s own definition of the level of ordinary skill. Prelim. Resp. 2. that the ’983 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’983 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends the claimed “presentation means” is a means-plus- function term under § 112, ¶ 6, that “can perform the function of (a) ‘receiv[ing] said itinerary from said computer’ and (b) ‘present[ing] said itinerary to said party.’” Pet. 8–9. Petitioner further contends the corresponding structure for performing the recited functions is display screen 130. Pet. 9. Patent Owner presents no argument against this contention. We agree that “presentation means” is a means-plus-function claim term. Because it is necessary to know what the structure and function are encompassed by the claim term in order to make a determination that the disagreement, we adopt Petitioner’s construction. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,212,983 - PTAB · Jan 17, 2024 · IPR2023-01026 · APJ Aaron W Moore · IPR · Institution
Instituted IPR on claims 1–36 on all petition grounds; the Board found a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in 2 U.S. Patent App. Pub. No. 2003/0137849 A1 (Exhibit 1005). 3 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 4 U.S. Patent No. 4,970,628 (Exhibit 1007). 5 U.S. Patent No. 6,144,158 (Exhibit 1008). 6 U.S Patent No. 6,049,749 (Exhibit 1009). mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“First, Patent Owner asserts that Alden is “fatally ambiguous” and “fails to provide an enabling disclosure” because it describes the use of two-dimensional sensors and switch arrays (as shown in Figure 3, below left), but the headlamp embodiment on which Petitioner relies (which is depicted in Figure 5, excerpted below right), is illustrated as having just a single line of LEDs. See Prelim. Resp. 19–23. Alden’s Figures 3 and 5 We find this argument unpersuasive because we conclude, on the present record, that one of ordinary skill in the art (see Section II.A), would understand that Figure 5 is a schematic/sectional type of drawing intended to show generally how the system components are connected and how the LEDs would project light through the lens, and that for clarity it omits other LEDs that would be necessary to produce a two-dimensional lighting pattern. We find that the skilled artisan would recognize that a headlamp intended to produce a pattern similar to that reflected in the control circuits of Figure 3 would include additional rows of LEDs passing through the center of the lens at different angles arranged around the center of the lens. Alternatively, we conclude that one of ordinary skill in the art wishing to use a headlamp with just a single line of LEDs would understand that the sensor and/or control circuitry would need to be tailored to such an arrangement.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Nov 14, 2023 · IPR2023-00719 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–4 and 11–15 on the asserted obviousness ground over Rosen, Rosen-II, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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 evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“E. Exercise of Discretion under 35 U.S.C. § 314(a) In its Preliminary Response, Patent Owner argues that the Fintiv factors support the exercise of our discretion under 35 U.S.C. § 314(a) to deny institution based on the Texas proceeding. Prelim. Resp. 7–13. Because Patent Owner has withdrawn its arguments concerning discretionary denial under 35 U.S.C. § 314(a) (see Ex. 3001), the issue is moot and we need not address it.” slip op. at 31
- Skill levelOther
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science degree in Electrical Engineering or a year or two of experience working with or designing processor-based systems with network connectivity, and more experience would compensate for less formal education and vice versa. Pet. 6–7 (citing Ex. 1002 ¶¶ 63–66). Patent Owner asserts that a person of ordinary skill in the art would have a bachelor’s degree in engineering, computer science, or a comparable field with at least 2 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience, with relevant experience substituting for education and vice versa. Prelim. Resp. 7. We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties interpret this limitation under 35 U.S.C. § 112, ¶ 6 to perform a function of “coupling the communications interface and the remote correspondent” using “a serial link and/or data link and any equivalents.” Pet. 16–17; Prelim. Resp. 7; Ex. 1026, 76–80 (Joint Claim Construction and Prehearing Statement). The Court in the Texas proceeding has interpreted this term under Section 112, ¶ 6. See IPR2023-00715, Ex. 1056, 79–83, 113. The ’075 patent describes several different structures that couple the communications interface 14 with RC 15. Communications interface 14 can couple and communicate with RC 15 via link 16. Ex. 1001, 6:59–7:3, Fig. 1. Communications interface 14 couples to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 8:53–65, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 8:66–9:5, Fig. 3. Thus, the structures that perform this function include (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) an integrated modem within the communications interface, a data link, and communications link provided by an ISP and equivalents. IPR2023-00715, Ex. 1056 (Claim Construction Order), 113.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,232,075 - PTAB · Nov 14, 2023 · IPR2023-00715 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 18 and 20 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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 evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties agree that this limitation is covered by 35 U.S.C. § 112, ¶ 6 to perform the function of “coupling the communications interface and the remote correspondent” with structure of “a serial link and/or data link and any equivalents.” See Pet. 7–8; Prelim. Resp. 5; Ex. 1016, 2–5 (Joint Claim Construction). The District Court in the Texas proceeding interpreted this term under Section 112, ¶ 6 with additional structures. Ex. 1056, 11–13, 107. The ’555 patent describes several structures by which communications interface 14 communicates with remote correspondent (RC) 15. In one embodiment, communications interface 14 communicates with RC 15 via serial link 16. Ex. 1001, 4:4–10, Fig. 1. Communications interface 14 may couple to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 6:1–11, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 6:12–18, Fig. 3. Thus, the structure to perform this function is (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) a modem integrated into the communications interface, a data link, and a communications link provided by an ISP and equivalents thereof. See Ex. 1056 (Claim Construction Order), 13, 107.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In the Texas proceeding, the limitation was construed under § 112, ¶ 6, as “displaying messages received from said remote correspondent” by the structure in Figure 7, column 5, lines 41–56, that establishes communication at predetermined times with a RC, reads current information from the RC, and displays the current information. Ex. 1056, 27–30, 108. We note that, based on the server-client relationship, processor 1 or RC 15 may start a transfer at predetermined times or on demand. Ex. 1001, 5:60–64. We disagree that Figure 5 provides structure for “displaying messages received from said first remote correspondent” because Figure 5’s flowchart does not display messages received from a RC. Figure 5’s flowchart parses key terms in information read from a RC, searches for values associated with a matched key term, and displays a message with components representative of the key terms and values found in the information. Ex. 1001, 4:4–65. The displayed messages concatenate prestored message components for matched key terms and associated values. Id. at 4:40–65, Fig. 6. Thus, as an example, the message “Current Montreal Temperature: +18C” concatenates a first prestored component “CURRENT MONTREAL TEMPERATURE” that is associated with a parsed term “temperature” received from a site providing local Montreal weather with a second message component “18 C” based on a value “18◦ C.” Ex. 1001, 4:40–65. This displayed message was not received from RC 15. Similarly, parsing stock quotation information to match a term “FMAGX” and an associated value of “102.75” causes display of a message “CURRENT QUOTE FOR MAGELLAN: 102.75” where the value 102.75 is concatenated with a component “CURRENT QUOTE FOR MAGELLAN.” Id. at 5:2–13; see Prelim. Resp. 6–7 (asserting if key terms and values are found when the received information is parsed, an alphanumeric message is generated for display by reading the prestored first message component that is a connotation of the matched key term from memory and concatenating it with a second message component for the value); Pet. Reply, 6–7. The claimed program thus displays information received from a remote correspondent by push or by pull. See Ex. 1001, 5:60–64.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art. (1) whether the art is from 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. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In addition, “[i]f a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,619,555 - PTAB · Mar 23, 2023 · IPR2022-01402 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 14, and 16–20, finding a reasonable likelihood of prevailing on obviousness over Geiwitz and, for claims 19–20, Geiwitz and Cardio Manual.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“which Patent Owner asserts the ’318 patent, but that litigation does not involve Petitioner. Ex. 2002 (infringement contentions from Rosen Technologies LLC v. Lennox International Inc., Case No. 3:22-cv-00732 (N.D. Tex.)). As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. We consider the Fintiv factors. Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“B. REAL PARTY IN INTEREST Patent Owner asserts that Petitioner fails to name Lennox and Ecobee, the litigation parties, as real parties in interest. Prelim. Resp. 26–27. Because no time bar would apply to either allegedly unnamed real party in interest (see Prelim. Reply 1), we decline to address Patent Owner’s assertions at this stage. See SharkNinja Operating, LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” Prelim. Resp. 5. We perceive no distinction between how the two definitions might affect our analysis. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“First, the claim language requires that the control program establish on the liquid crystal display both “a representation of a first virtual button” and “a first legend indicative of a first control function of said thermostat.” Ex. 1001, 13:28–39 (claim 1), 15:1–9 (claim 16), 16:18–26 (claim 19). The claims do not require that the legend is part of the button, or any other specific relationship between the legend and button. Thus, the claim language does not support the construction Patent Owner seeks. Second, the Summary of the Invention states that “an image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., 4 Although Patent Owner seeks construction of “a first legend indicative of a first control function,” its proposed construction only addresses “legend,” while maintaining the other claim language. Prelim. Resp. 5–9. We address “legend” in the context of the other claim language and therefore need not address the full phrase. alphanumeric characters) need not be located on the button to which it corresponds. Accordingly, we decline to adopt Patent Owner’s asserted construction at this stage. No other aspect of the challenged claims requires construction for purposes of institution. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,156,318 - Tesla, Inc. v. Arsus, LLCInstitutedPTAB · Dec 23, 2022 · IPR2022-01216 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–21 on all presented grounds, finding a reasonable likelihood of unpatentability based on the Dechamp combinations and Inagaki.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors (a)–(f) to consider in evaluating the applicability of § 325(d)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–21 of the ’877 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have had at least a Bachelor’s of Science in mechanical engineering, electrical engineering, or a related technical field pertinent to automotive control or safety systems, along with two or more years of experience working with automotive control or safety systems.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“At this stage, Petitioner sufficiently shows that claims 1, 8, and 15 do not recite sufficient structure for performing the recited function. See Pet. 14–15 (citing Ex. 1003 ¶ 51), 20 (citing Ex. 1003 ¶¶ 52–53). Based on the preliminary record, we agree with Petitioner that (1) claims 1, 8, and 15 include functional recitations, (2) the phrase “mode that allows” recited by claims 1 and 8 is equivalent to using the means-plus-function language “means for,” and (3) the “apparatus” recited by claim 15 does not provide sufficient structure to avoid interpreting under § 112(f). See id. at 14–15, 20. Without further argument or supporting evidence from the record, the mere recitations of “vehicle,” “steering wheel,” and “rolling wheel” do not show how these recited components, without others, can perform the recited functions of independent claims 1, 8, and 15. See Prelim. Resp. 16–17, 19. would be required to “prevent[] said vehicle from being steered beyond a rollover threshold of said vehicle,” as recited by claim 1. See, e.g., Ex. 1001, Fig. 1. Patent Owner also does not address at this stage why “mode that allows” should not be considered equivalent to means-plus-function language. See Prelim. Resp. 18. At this early stage, Petitioner sufficiently rebuts the presumption that § 112(f) does not apply. See Pet. 14–21. We, therefore, preliminarily adopt Petitioner’s proposed means-plus- function interpretations for claims 1, 8, and 15. In particular, for claim 1, we agree that the recited function is allows a vehicle to be steered within a maximal non-rollover steering range of motion of said vehicle but prevents said vehicle from being steered beyond a rollover threshold of said vehicle at any rollover capable speed of said vehicle regardless of the source of an oversteer rotational load applied to a steering wheel of said vehicle. Pet. 15–16 (citing Ex. 1003 ¶ 51); Ex. 1001, 10:7–12. We also agree that the corresponding structure for the asserted function is the first embodiment of the ’877 patent (“Corresponding Structure #1”). Pet. 17–18 (citing Ex. 1001, 2:35–39, 2:48–52, 2:57–3:18, 5:15–21, 5:29–57, 5:63–65, 6:17– 7:38, 7:45–54, Figs. 1–4B). We further agree that the corresponding structure can also be the fourth embodiment of the ’877 patent (“Corresponding Structure #2”). Id. at 18–19 (citing Ex. 1001, 7:45–54, 8:12–17, 8:25–34, 8:58–10:4, Figs. 5–7A; Ex. 1003 ¶ 54).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,077,877 - Docusign, Inc. v. Paul C. ClarkInstitutedPTAB · Nov 1, 2022 · IPR2022-00924 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–3 and all petition grounds, finding a reasonable likelihood that claim 1 would be obvious over Duncan and Gilbrech.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under Advanced Bionics, “we review whether Petitioner relies upon [a prior art reference in the inter partes review] in substantially the same manner as the Examiner cited [a different prior art reference] during prosecution such that the former discloses substantially the same information as the latter in relevant part.” Advanced Bionics, Paper 6, 15. Here, the record supports Petitioner’s contention that Duncan operates, in relevant part, in a different manner than Zarom because Duncan, which teaches translating from HTTP to a network protocol, whereas Zarom teaches translating protocol instruction to HTTP. Under Advanced Bionics, Duncan’s operation in a different manner than Zarom indicates that Duncan is not substantially the same prior art as Zarom. Further, Duncan is applied to all limitations of claim 1, not just those to which Zarom (or Schneider) were applied, further illustrating that Duncan is not merely applied in a manner that is cumulative to the teachings of either Zarom or Schneider. The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence of record.” Advanced Bionics, Paper 6, 9. In Advanced Bionics, the Board addressed a combination of a prior-applied reference with a cumulative reference to find the entirety of the teachings to be previously evaluated. Id. at 16–17. Here, there is no indication that the full extent of the teachings being asserted against claim 1 are merely cumulative to the full extent of those previously evaluated; e.g., including those for which Waugh was applied during prosecution. That is, even if Duncan was cumulative to Zarom and Schneider, Duncan has not been shown to be cumulative to Waugh, and therefore, the assertion based upon Duncan does not solely rely on substantially the same prior art as applied to claims 1–3 during prosecution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Analysis Upon review of Petitioner’s explanation and supporting evidence, and Patent Owner’s Preliminary Response, Sur-reply, and supporting evidence, we are persuaded that Petitioner has demonstrated sufficiently, for purposes of institution, that the combined teachings of Duncan and Gilbrech make obvious the challenged claim. Petitioner provides claim mappings of each individual limitation of the challenged claim of the ground to the combined teachings. Pet. 19–35. Patent Owner does not, at this time, dispute Petitioner’s contentions except as to limitation [1.6]. For the reasons stated below, we determine that the prior art teaches each limitation of claim 1.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’957 patent was filed. Pet. 13. Relying upon the Black Declaration, Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in computer network security, computer science, computer engineering, or a related field, with at least two years of professional experience working in computer and network security. Ex. 1003, ¶26. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Id. Similarly, with more experiential knowledge of computer and network security, such as experience developed while developing client-server networks, less professional experience is needed to attain the ordinary level of skill. Id. At this juncture, Patent Owner does not contest Petitioner’s assessment of the level of ordinary skill in the art. Prelim. Resp. 7. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner and uncontested by Patent Owner as it is supported by the Black Declaration and is consistent with the ’957 patent and the asserted prior art.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purpose of institution, we agree with the Patent Owner’s construction of “network application level protocol” as “a protocol that functions at the application level and is intended to transfer data over a network.” During prosecution, the Examiner pointed to Zarom’s conversion of certain instructions as converting from one network application level protocol to a target application level protocol. Ex. 1002, 92. However, during an interview with Dr. Clark (the applicant) in a related application, the Examiner agreed with Dr. Clark that Zarom’s teaching was directed to VPN (Virtual Private Network) level protocols, which did not teach the newly amended “network application level protocol.” Id. ¶ 50. We note that the above construction does not explicitly exclude either a network level protocol or an application level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Inventor and Declarant Dr. Clark indicated in an interview during prosecution that network application level protocols would include “SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009 (prosecution history of the ’215 application), 192; Ex. 1003 ¶ 78. Dr. Black states that SSL (Secure Sockets Layer) is not an application level protocol, although the other listed protocols are application level protocols. Ex. 1003 ¶ 78. The parties should further develop this construction during trial.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,391,957 - Microsoft Corp. v. Surfcast, Inc.InstitutedPTAB · Oct 7, 2022 · IPR2022-00591 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–24, finding a reasonable likelihood that Microsoft would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Petitioner stipulates that, if this review is instituted, it will not pursue in the district court any ground that is raised or reasonably could have been raised during this IPR.” Pet. 5. In light of that stipulation, we decline to discretionarily deny institution under Fintiv. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, at 3, 7–8, Memorandum, June 21, 2022.6 slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree that MSIE Kit was previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (precedential). Although it was before the Examiner as listed in an IDS, the record does not indicate any substantive consideration. See Pet. 7. Our evaluation of Petitioner’s challenge based on MSIE Kit leads us to conclude the Examiner 6 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. overlooked MSIE Kit and therefore erred in a manner material to the patentability of the challenged claims. See Advanced Bionics, IPR2019-01469, Paper 6, 10–11. Moreover, the prior art and grounds based on Excel97 were not previously presented to the Office. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021). For the reasons that follow, based on the present record, we conclude that Petitioner has shown a reasonable likelihood it will prevail with respect to at least one challenged claim, and we institute inter partes review of the ’434 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person or ordinary skill in the art “would have had a Master’s degree in software engineering or computer science (or equivalent experience working in industry) and several years of experience designing, writing or implementing software products, either at the application or operating system level.” Pet. 11. Petitioner submits further that skilled artisans “would have been familiar with various technological concepts, including those relating to user interfaces, operating systems and software applications, basic computer functionality, networking and data processing.” Id. Patent Owner adopts Petitioner’s definition. Prelim. Resp. 11–12.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,946,434
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.