- Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner
“argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24
Claim construction§ 112 disclosurecites GrahamPatents in suitUS 7,970,059 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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§ 112 disclosurecites GrahamPatents in suitUS 8,139,878 - Google LLC v. Express Mobile, Inc.InstitutedPTAB · Sep 27, 2022 · IPR2022-00790 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1, 2, 5–7, and 11 on the petition’s grounds and granted Google’s motion to join the Facebook IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“[this] petition and the petition in the Facebook IPR Proceeding are substantively identical”); Prelim. Resp. 9, n.2 (“Patent Owner is not including technical merits arguments in its Preliminary Response.”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“* * * As explained above, we find that only the first General Plastic factor favors denial. We thus conclude that, considered as a whole, the relevant factors do not favor a discretionary denial of institution.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“the Motion would increase complexity. Petitioner has agreed to act as a understudy and thus will not have a material role in this proceeding unless it becomes the sole petitioning entity. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
- PTAB / AIA Trials › §315(e) estoppelOther
“Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
Discretionary denialPatents in suitUS 9,063,755 - PTAB · Sep 27, 2022 · IPR2022-00785 · APJ Aaron W Moore · IPR · Institution
The Board instituted review on the petition’s challenges and granted joinder in IPR2021-01455, limiting the joined petitioner’s role as specified in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution 35 U.S.C. § 314(a) provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“This Petition raises grounds of unpatentability identical to those in the already instituted in IPR2021-01455.”); Prelim. Resp. 10, n.1 (“Patent Owner is not including technical merits arguments in its Preliminary Response”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“For the reasons explained below, we find the present circumstances distinguishable from those in Uniloc, and we decline to deny the Petition based on the General Plastic factors.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We also are not persuaded by Patent Owner’s argument that granting the Motion would increase complexity. Petitioner has agreed to act as an understudy, and thus will not have a material role in this proceeding unless all other entities are terminated. Consistent with our normal practice, all Petitioning entities will speak with one voice. And although Petitioner does identify a new expert, it states that “Dr. Jeffay agrees with Dr. Madisetti’s opinions and adopts them as his own” and that “the declaration of Dr. Jeffay is substantively identical to the declaration of Dr. Madisetti and does not expand on the scope of expert opinions provided by Dr. Madisetti in the Facebook IPR.” Mot. 3 n.1. We understand that Dr. Jeffay will have no active role in the proceeding unless and until Facebook settles and Dr. Madisetti withdraws, in which case Dr. Jeffay will be limited to the positions previously taken by Dr. Madisetti. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 12
Discretionary denialPatents in suitUS 9,063,755 - PTAB · Sep 19, 2022 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Institution
IPR instituted on all asserted grounds for claims 1–14; the Board found a reasonable likelihood that Petitioner would prevail on the challenged obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we determine that institution of inter partes review of claims 1–14 is warranted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s contention is implicitly based on construing the scope of “to conceal the pre-installed base” to exclude partially concealing the preinstalled base. We construe the scope of “to conceal the pre-installed base” to encompass partially concealing the pre-installed base. Our construction of this term is not final, and we invite the parties to present arguments and evidence in support of or in opposition to our construction. On this record, the Petition and supporting evidence sufficiently show that ILP Retrofit’s disclosure of a retrofit that prevents the bottom and portions of the sides of the pre-installed base from being seen teaches “to conceal the pre-installed base” as claimed. Ex. 1009, slide 5; Ex. 1010, screenshot 29.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“However, Patent Owner’s contentions do not address Petitioner’s proposed modification. Petitioner contends that a person of ordinary skill, when deciding whether to remove the tombstones or to leave the tombstones in place, would consider factors such as the difficulty of removing the tombstones, as well as installation time, labor costs, and disposal costs. Pet. 12–14 (citing Ex. 1005, 1:64–2:2, 2:6–17, Fig. 11; Ex. 1003 ¶ 73); see id. at ¶ 55. Thus, Petitioner does not contend that a person of ordinary skill would always leave the tombstones in place. Rather, Petitioner, relying on the testimony of Dr. Ducharme, contends that when the costs of removing the tombstones are greater than the costs of leaving the tombstones in place, a person of ordinary skill would have left the tombstones in place, and would have done so using ordinary skill and common tools available at the time of invention. Id. at 12–14, 53 (citing Ex. 1003 ¶¶ 205–207). On this record, we agree with Petitioner and Dr. Ducharme. Patent Owner contends that the Petition and Dr. Ducharme rely on conclusory statements rather than a meaningful, articulated explanation with rational underpinning to support the conclusion of obviousness. Prelim. Resp. 23. We disagree. Dr. Ducharme relies on the teachings of several prior art references to show that a person of ordinary skill, after determining that the costs of removing the tombstones are greater than the costs of leaving the tombstones in place, would have left the tombstones in place and would have increased the lengths of the profiles to accommodate the tombstones in order to yield the predictable benefits of reducing labor costs, reducing installation time, and reducing disposal costs of hazardous materials. Ex. 1003 ¶¶ 73–89 (citing Ex. 1005, 1:64–2:2, 2:6–17, Figs. 10 and 11; Ex. 1007 ¶ 18, Fig. 4; Ex. 1012, 2:56–3:10; Ex. 1014 ¶¶ 6–7, Fig. 1; Ex. 1015, 2:2–5). Dr. Ducharme’s testimony is sufficiently supported by evidence. The Petition and supporting evidence provide an articulated reasoning with a rational underpinning to support the legal conclusion of obviousness. See KSR Int’l., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Disputed limitation of claim 12” slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 10,429,041 - PTAB · Sep 19, 2022 · IPR2022-00534 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–12, and 18–28 on all asserted grounds, finding a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we determine that institution of inter partes review of claims 1, 2, 4–12, and 18–28 is warranted.” slip op. at 2
- BurdenDecided for petitioner
“We disagree with Patent Owner. Dowling discloses that modified fixture 2000 could be recessed, such that housing 2402 is concealed behind a ceiling. Ex. 1007 ¶ 9; see id. ¶¶ 11–12, 106–107, 114. On this record, we are sufficiently persuaded that when modified conventional lighting fixture 2000 of Dowling is recessed as taught by Dowling, a person of ordinary skill would have inverted the fixture as contended by Petitioner, such that fixture housing 2402 is concealed behind a ceiling. We are also persuaded that a person of ordinary skill would have recognized that LEDs 104 of the retrofit kit would be more effective when facing an area that the LEDs are intended to illuminate, such as the area under the ceiling as shown in inverted Figure 4. See Pet. 28–29; Ex. 1003 ¶ 175. On this record, the Petition and supporting evidence sufficiently shows that Dowling, in view of the knowledge of a person of ordinary skill, teaches “the light panel defining a raceway external to and above the light panel and below the previously-installed light fixture” which is “attached to the ceiling of a building” as recited in claim 1. Disputed limitation of claim 18” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner contends that, with respect to claims 1 and 18, limitations in the body of each claim find antecedent basis in the preambles. Prelim. Resp. 8. In particular, Patent Owner contends that “the previously-installed light fixture” and “the first tombstone and the second tombstone” recited in the body of claim 1 find antecedent basis in the preamble. Id. Patent Owner contends that “the ceiling light fixture,” “the second side,” “the first tombstone,” and “the second tombstone” recited in the body of claim 18 find antecedent basis in the preamble. Id. at 8–9. We do not need to construe the preambles at this stage to resolve any controversy. Even were we to consider the preambles as limiting, Petitioner has sufficiently shown that the prior art teaches the preambles, as discussed below in the context of our unpatentability analysis. Should the parties believe that construing the preambles is necessary to resolve a dispute, we invite the parties to present any arguments they wish to make regarding construction of the preambles in the appropriate trial paper (e.g., Patent Owner’s Response, Petitioner’s Reply).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Patent Owner that the scope of “disconnecting electrical connections” as claimed is limited to “sever.” Looking at the intrinsic evidence, claim 24 does not recite “permanently disconnecting.” Further, the specification does not define disconnecting electrical connections as limited to permanently disconnecting the connections. Although the specification gives an example of a de-energized ballast, the specification does not disclose that the electrical connections to the ballast must remain permanently disconnected. See Ex. 1001, 5:60–63. Further, the specification does not indicate that the claim is limited to this disclosed embodiment, and we decline to read this embodiment into the claim. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) (“[I]t is improper to read limitations from a preferred embodiment described in the specification – even if it is the only embodiment – into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”); Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.”’).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,837,628 - PTAB · Sep 15, 2022 · IPR2022-00638 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1–4 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Boyce and Boyce–Lee obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“deny institution under 35 U.S.C. § 325(d).” Prelim. Resp. 9. Section 325(d) provides that, in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (2018). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 [the] 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) (addressing in a two-part framework the factors presented in Becton, Dickonson & Co. v. B Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PRAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on the challenged claims of the ’752 patent. Accordingly, we institute inter partes review as to the challenged claims of the ’752 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingTerm construed patent owner constructionDecided for patent owner
“Petitioner and Patent Owner’s arguments raise the following primary issues: (1) whether the preamble of claim 1 is limiting, and if so, (2) whether the preamble requires recording of the scrambled data and (3) whether the recording of scrambled data has any temporal relationship with descrambling of the scrambled data of said stream including whether the recording occurs in parallel with the descrambling. At this preliminary stage, we determine that the preamble is limiting and that it requires recording of the scrambled data but that the recording of the scrambled data is not required to have any temporal relationship with the subsequent limitations reciting the “descrambling of said scrambled data of said stream” or the “recording of these additional data on the recording medium.” Here we agree with Patent Owner that the terms “said scrambled data” and “said stream” in limitation 1.1 refer to the term “scrambled data” and “stream” appearing in the preamble and depend on these terms for antecedent basis. Prelim. Resp. 6–7. Similarly, the phrase “the recording medium” appearing in limitation 1.2 refers back to the “recording medium” of the preamble. For these reasons, we determine that the preamble is limiting. Having determined that the preamble is limiting, we also determine that the preamble requires “recording of the scrambled data.” As Patent Owner explains, the express language of the preamble recites “recording of the scrambled data” as a limitation that is in addition to the steps that follow. Prelim. Resp. 5. We do not find any evidence, nor does Patent Owner explicitly argue, that the recording of the scrambled data has any temporal relationship to the other limitations of the claim. We therefore do not interpret the claim to include such a requirement at this stage of the proceeding.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art in the field “at the time of the filing of ’752 Patent’s earliest possible priority date would have had at least a Bachelor’s degree in Electrical, Computer, and/or Network Engineering (or related subject matter), and two to three years of relevant industry experience.” Ex. 1002, ¶ 76; see Pet. 16. Patent Owner states that a person of ordinary skill in the art “in November 1999, would have had at least a bachelor’s degree in electrical engineering or computer science, and three to five years of industry experience in the field of computers and communications.” Prelim. Resp. 2– 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. Thus, we determine at this stage of the proceeding, that a person of ordinary skill in the art would have been a person with a bachelor’s degree in electrical, computer, or network engineering and two to three years working in the field.” slip op. at 13
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,079,752 - Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentablePTAB · May 11, 2022 · IPR2021-00067 · APJ Jeffrey S Smith · IPR · Final written decision
The Board held claims 1, 2, 8, 10, 18, 25, 27, 30–33, 37, 38, 40, 43–46, 49, 52–55, and 58–61 not shown unpatentable over either asserted obviousness combination.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Bohannon testifies that an ordinarily skilled artisan would have “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent 1 US 2011/0096573 A1, published Apr. 28, 2011 (Ex. 1005). 2 US 6,466,461 B2, issued Oct. 15, 2002 (Ex. 1006). 3 US 5,498,995, issued Mar. 12, 1996 (Ex. 1007). combination of academic study and work experience.” Ex. 1003 ¶ 41. Mr. Sandler uses the same definition for his analysis. Ex. 2001 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’031 patent, and, for this Decision, we adopt that description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We determine that we do not need to construe any claim term expressly for this Decision. 4 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any 4 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“identify Zhu’s purported bias circuit. Inst. Dec. 30. Although we did not decline institution on that basis, we do agree with Patent Owner that, in the Petition, Petitioner should have identified the purported bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Further, in our Institution Decision, we instructed Petitioner to identify Zhu’s purported bias circuit during the trial. Id. As set forth below, during trial, Mr. Bohannon, upon whose testimony Petitioner relies to prove a motivation to combine, gave inconsistent testimony regarding that bias circuit. That inconsistent testimony, coupled with Mr. Bohannon’s initial failure to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. As mentioned, the Petition does not identify the bias circuit in Zhu that it claims an ordinarily skilled artisan would be motivated to improve. Pet. 12–13. In his original declaration, Mr. Bohannon also does not identify that bias circuit. Ex. 1003 ¶¶ 56–58. Zhu itself does not show or discuss any bias circuit. Ex. 2015 ¶ 118. Thus, Mr. Bohannon’s original testimony regarding motivations to combine lacks specificity: all four rationales set forth by Mr. Bohannon are directed to improving a bias circuit in Zhu, which Mr. Bohannon did not identify. Ex. 1003 ¶¶ 56–58; Pet. 12–13. As discussed, in our Institution Decision, we instructed Petitioner to identify the bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Inst. Dec. 30. During subsequent cross-examination, Mr. Bohannon was asked to identify that bias circuit and identified the wire in Figure 3 of Zhu from Vout up to VCC at controller 320 as Zhu’s bias circuit. Ex. 2016, 186:4–6 (“The bias circuit was just a wire from Vout or trace out of circuit, probably a trace out of PCB going from Vout to 320.”). After Mr. Sandler testified that there was no evidence that a wire would have the problems that Mr. Bohannon identified Zhu’s bias circuit as having (Ex. 2015 ¶ 125), Mr. Bohannon changed his identification of Zhu’s bias circuit (Ex. 1025 ¶ 27), now identifying the elements highlighted in red in the annotated portion of Figure 3 of Zhu, reproduced below: Ex. 1025 ¶ 27. The above annotated figure additionally identifies diode 313, capacitor 314, and the wire extending from Vcc to Vout as Zhu’s bias circuit. Id. This latter identification is not only inconsistent with Mr. Bohannon’s cross examination testimony, it is also inconsistent with his original declaration testimony. In his original declaration, Mr. Bohannon illustrated the combination of Zhu and Mao as follows: Ex. 1003 ¶ 57. Mr. Bohannon described this combined structure as showing “the bias circuitry of FIG. 9 of Mao has been attached in place of the bias circuitry in Zhu, which merely powered the secondary controller using the output voltage.” Id. ¶ 58 (emphasis added). As can be seen from the above figure, diode 313 and capacitor 314 from Zhu Figure 2 were not replaced in this combined structure. Thus, Mr. Bohannon’s reply testimony that diode 313 and capacitor 314 are part of what he originally referred to as Zhu’s bias circuit is inconsistent with his original declaration testimony. This inconsistent testimony, coupled with the initial failure by Mr.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“Bohannon to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. The proper identification of Zhu’s bias circuit is not a minor issue: all four rationales for Petitioner’s motivation to combine are directed to improving Zhu’s bias circuit. Pet. 12. Further, although, over Patent Owner’s objections, we gave Petitioner the opportunity to identify the bias circuit in Zhu to be improved during trial, we do not permit Petitioner and Mr. Bohannon to identify that bias circuit during cross examination and then completely change that identification after Patent Owner argued the initial identification was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), 73;5 see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. e- Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). To be clear, we do not hold the issues concerning Petitioner’s and Mr. Bohannon’s identification of the bias circuit in Zhu to be dispositive, but those issues do diminish the weight we accord Mr. Bohannon’s testimony regarding motivations to combine, which undermines Petitioner’s showing regarding those motivations.” slip op. at 21
Patent outcomesUS RE47,031 not shown unpatentableClaim construction§ 103 obviousness - Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentablePTAB · May 11, 2022 · IPR2021-00071 · APJ John R Kenny · IPR · Final written decision
Claims 18–23, 25, 30–31, 34–36, 41–43, 45, and 48–51 were not shown unpatentable because the petitioner did not prove motivation to combine for any asserted obviousness ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Mr. Bohannon testifies that an ordinarily skilled artisan would have had a “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent combination of academic study and work experience.” Ex. 1003 ¶ 43. Mr. Sandler uses the same definition for his analysis. Ex. 2015 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’713 patent, and we adopt that description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Patent Owner requests that we construe the term “regulate” in claims 18 and 48. PO Resp. 13. We determine that we do not need to expressly construe any claim term for this Decision. 6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 9
- BurdenFwd all claims patentableNot shown unpatentable
“III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision. prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Further, it is Petitioner’s “burden to burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quoting Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367- 68 (Fed. Cir. 2016)). As set forth below, we determine that Petitioner has not proven that an ordinarily skilled artisan would have been motivated to make any of the combinations set forth in its asserted grounds. Thus, Petitioner has not proven that any challenged claim would be unpatentable. Magnum Oil, 829 F.3d at 1381.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, Mr. Bohannon’s testimony, upon which Petitioner’s analysis for this rationale to combine relies, is unspecific and conclusory, and thus is entitled to little weight. Ex. 1003 ¶¶ 58–60. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015); Regents of Univ. of Min v. AGA Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); 37 C.F.R. § 42.22(a)(2) (“Each petition . . . must include . . . [a] full statement of the reasons for the relief requested including material facts.”). As discussed in Section III.A.4.b. above, Mr. Bohannon’s testimony regarding Zhu’s bias circuit was initially unspecific and subsequently contradictory. Further, as set forth below, Mr. Bohannon’s additional testimony for this rationale is conclusory and thus entitled to little weight. In his original declaration, Mr. Bohannon testifies that a passage in Mao (Ex. 1006, 1:50–55) teaches that a secondary bias circuit such as the one disclosed in Zhu can be disadvantageously vulnerable to output voltage fluctuations. Ex. 1003 ¶¶ 58–60. The cited passage reads “Although changing the polarity of the bias winding Tb may somewhat reduce the variation range of the voltage bias Vbias in some cases, the reduction is usually not significant, considering that both input voltage and output voltage can change in a typical dc-dc converter.” Ex. 1006, 1:50–55. This passage does not, on its face, teach that a secondary bias circuit, such as the one disclosed in Zhu, can be disadvantageously vulnerable to output voltage fluctuations. Id. And Mr. Bohannon does not explain why that passage teaches that the circuit disclosed in Zhu is vulnerable to such fluctuations. Ex. 1003 ¶¶ 58–60; Ex. 1025 ¶¶ 39–45. Second, the record indicates Zhu’s circuit would not be vulnerable to” slip op. at 24
Patent outcomesUS RE47,713 not shown unpatentableClaim construction§ 103 obviousness - PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523
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.