- PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). For the reasons set forth below, we institute review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent, and we adopt it here.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,952,153 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00816 · APJ Russell E Cass · IPR · Institution
Instituted IPR on claims 1–7, 9–13, 16, 23, 25, 26, 28, and 29 over Behbahani, Leete, and Tan because claim 23 showed a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’330 patent. Pet. 73. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 54. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’330 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“That Behbahani and Tan appeared in an initialed IDS is sufficient to satisfy the first Advanced Bionics prong. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). Leete was not previously presented to the Office, but we need not decide whether the reference to Leete in Behbahani (see Section II.F.1 below) or Petitioner’s obviousness arguments concerning Behbahani and Leete suffice to satisfy the first Advanced Bionics prong for purposes of this Decision. As discussed below, even if we assume that the first part of the Advanced Bionics framework is satisfied, Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims in the second part of the framework.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00820 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–6, and 8–11 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over Behbahani and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“To the extent Patent Owner is suggesting that considerations such as those set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential Section II.B.4.i) support denial of institution, we are unpersuaded because the other proceedings to which Patent Owner refers did not involve the ’210 patent. We thus do not exercise our discretion to deny institution under 35” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references. See Pet. 17–67. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani or Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied step 2 of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary for Claim 1 For the foregoing reasons, we are persuaded that Petitioner’s cited evidence and reasoning shows a reasonable likelihood that Petitioner would prevail in its contentions regarding claim 1.5 5. Remaining Claims At this stage, Patent Owner does not separately challenge Petitioner’s contentions as to claims 2–3, 5–6, and 8–11. Because we have preliminarily determined that Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’210 patent, we institute inter partes review on all claims and grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all” slip op. at 34
- Skill levelSkill level patent owner adoptedDecided for patent owner
“a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 38–40). Patent Owner contends that “a person of ordinary skill in the art . . . would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 27 (citing Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this decision. If the parties believe that the choice of one formulation over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,638,210 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Feb 16, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–19 and 37–58 based on the asserted grounds and granted Porsche’s motion to join IPR2023-00335, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the evidence and arguments “are substantively identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4. Additionally, Petitioner represents that it is willing to accept a limited, “understudy role” to Volkswagen (the original petitioner in the VW IPR), taking over only in the event VW no longer participates. See id. at 5; id. at 5 n.3. Specifically, Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) Petitioner will not make any substantive filings and shall be bound by the filings of VW, unless a filing concerns termination and settlement, or issues solely involving Petitioner; (b) Petitioner will not present any argument or make any presentation at the oral hearing unless an issue solely involves Petitioner, or when addressing motions that do not affect VW; (c) Petitioner will not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by VW alone and with VW’s agreement; (d) Petitioner will not seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner; and (e) Petitioner will not rely on expert testimony beyond that submitted by VW unless and until VW is terminated as party to the proceeding prior to any necessary depositions. See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion. Thus, Petitioner’s Motion stands unopposed. Under these circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is” slip op. at 8
- PTAB / AIA Trials › Discretionary denialNot reached
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Dec 21, 2023 · IPR2023-01199 · APJ Michelle N Wormmeester · IPR · Institution
Instituted review of claims 1–4, 7–10, 12, and 15–18 on all petitioned grounds, and granted AO Kaspersky Lab’s motion to join IPR2023-00124.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner’s argument is unavailing. Our rules specifically prohibit incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”). We therefore decline to consider, at this 2 Morris et al., U.S. Publ’n No. 2007/0016953 A1, published Jan. 18, 2007 (Ex. 1005). 3 van Oorschot et al., U.S. Patent No. 8,087,087 B1, issued Dec. 27, 2011 (Ex. 1006). 4 Capalik et al., U.S. Publ’n No. 2011/0321166 A1, published Dec. 29, 2011 (Ex. 1008). stage, the arguments presented in the Patent Owner Response in the 124 IPR. Because Patent Owner does not offer other arguments on the merits, for the reasons given in our institution decision in the 124 IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing that the challenged claims would have been obvious. See 124 IPR, Paper 11.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013). As noted above, the Petition asserts the same unpatentability grounds on which we instituted review in the 124 IPR, relying on substantially the same evidence.6 Joinder Mot. 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00124 cease to participate in the instituted [124] IPR proceeding, [Petitioner] will not assume an active role.” Id. at 7–9. Petitioner represents that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner’s] joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [124] IPR Scheduling Order.” Id. at 6– 7. We agree with Petitioner that joinder with the 124 IPR is appropriate under these circumstances. Patent Owner did not file an opposition to Petitioner’s joinder motion. Accordingly, we grant the joinder motion.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for patent owner
“Patent Owner’s argument in this regard also is unavailing. The 124 IPR was instituted on June 15, 2023, and Petitioner filed its joinder motion on July 14, 2023, before the joint motion to terminate in the 124 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 124 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 124 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityNot reached
“This argument also is unavailing. We need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 124 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 5
Discretionary denialPatents in suitUS 9,578,045 - PTAB · Dec 12, 2023 · IPR2023-01040 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 48–87 based on the petition’s asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“previously challenged the same claims of the same patent. General Plastic, Paper 19, 16. Here, Patent Owner asserts that although Petitioner did not do so, we should consider Petitioner as having a substantial relationship to Volkswagen, which is also as a defendant in Patent Owner’s infringement suit. Prelim. Resp. 50–51. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 51), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id.), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 52), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in 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.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 8; Prelim. Resp. 6. As discussed below, however, Patent Owner applies and argues for a particular construction of “classifying an object.” See infra at 11 (§ II.D.1.a). We discuss that potential construction below. Beyond that term, we agree with the parties and therefore do not further construe the claims for this decision. 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“an object is an oncoming vehicle or anything else, i.e., classifying an object.” Prelim. Resp. 17. In Patent Owner’s view, Alden’s CPU instead “simply determines whether detected incoming light has a threshold intensity and controls the beam segments produced by the LED elements 119 of headlight 123 accordingly.” Id. at 17–18. Patent Owner takes the position that “classifying an object requires identifying an object and distinguishing that object among multiple classes or types of objects, such as distinguishing between vehicles, road signs, and pedestrians as described in the ’551 patent. Id. at 18 (citing Ex. 1001, 44:36–45:44, 52:66–53:4). We do not agree that the two specification passages Patent Owner cites compel such a construction. The first passage relates to a preferred embodiment that includes “a machine vision system with pattern recognition capabilities as is known in the art.” Ex. 1001, 44:37–40. The ’551 patent describes that, using known pattern-recognition methods, camera outputs “are analyzed by appropriate computational means employing trained pattern recognition techniques to classify, identify or locate the contents.” Id. at 44:63–45:3. Although the specification states that known technologies can be sued to classify an image’s contents, that does not define or restrict the understanding of what is required to “classify” an object. The second passage states that, “[u]sing color and pattern recognition techniques it is possible to determine what is a sign.” Id. at 52:66–67. To the extent that informs our understanding of “classify,” is supports a simple correlation between an image and an object. It does not include distinguishing the object among multiple classes or types of objects as Patent Owner contends.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Dec 12, 2023 · IPR2023-01039 · APJ Jason W Melvin · IPR · Institution
Instituted review of claims 8, 10–18, and 24–47 based on the petition grounds because Mercedes-Benz showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“1. Lack of particularity First, Patent Owner contends that the Petition lacks particularity under 35 U.S.C. § 312(a)(3) because it improperly combines anticipation and obviousness 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/07538 A2, published Sept. 27, 2001 (Ex. 1008). grounds based on Alden alone. Id. at 49–52. We do not agree that the Petition’s approach presents a problem or is hard to understand. As discussed below, we agree with Patent Owner that Petitioner has not adequately supported its obviousness contention based on Alden alone (see infra at 17 (§ II.D.2)), but that does not undermine the anticipation ground or make it difficult to understand. Accordingly, we do not agree with Patent Owner that the Petition warrants discretionary denial for lack of particularity.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Resp. 54–59. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 55), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 56), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 56), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 9
- 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in 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.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Jul 24, 2023 · IPR2023-00448 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–33 on all petitioned grounds, finding a reasonable likelihood that Keysight would prevail on at least one challenged claim.
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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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). When considering whether the combined disclosures in Law and Golnabi teach the invention covered by claim 1, however, we discuss a claim-construction issue, i.e., whether separately listed claim elements are distinct components of the claimed invention. See infra § III.D.3(f)(iii).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“ordinarily skilled artisan would have had a reason to combine Golnabi’s teachings with Law’s teachings in the way Petitioner proposes. See Pet. 18–19, 38; Ex. 1003 ¶¶ 53–57, 80. Specifically, Golnabi teaches techniques for analyzing and modifying firewall policy rules to “optimize the firewall policy and efficiency.” Ex. 1009, 305–06, 308–14; see Ex. 1003 ¶¶ 53–54. As an example, Golnabi discloses combining rules having similar characteristics using “an aggregation algorithm to generate a minimum number of firewall policy rules for efficiency,” e.g., “aggregated by combining the common fields” in multiple rules. Ex. 1009, 308; see Ex. 1003 ¶ 80. For instance, if multiple rules have “matching fields with an exception of source port field,” the “rules are then aggregated” by “combining all the source ports as a range of these source ports to get one generalized rule.” Ex. 1009, 308; see Ex. 1003 ¶ 53. Similarly, “the IP addresses of 129.110.10.7 and 129.110.10.1 can be aggregated to 129.110.10.*” where the * character represents a specified range. Ex. 1009, 308–09; see Prelim. Resp. 22 (quoting Ex. 1009, 308–09).” slip op. at 53
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,012,474 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250
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.