• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand

  The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01089 · APJ Barry L Grossman · IPR · Remand

  On remand, the Board held claims 1–13 not shown unpatentable because the cited combinations did not teach or suggest limitations D(1), D(2), and D(3).

  RulingsRemand decision

  • RemandOther

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Sturgell, 553 U.S. at 894–95 to determine whether Apple is a privy of Petitioner. After doing so, we reach the conclusion that there is no persuasive evidence that Apple is a privy of Petitioner because:” slip op. at 50

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The Graham analysis includes a factual determination of the level of ordinary skill in the art. Without that information, a court, or this Board, cannot properly assess obviousness “because the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Thus, the level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are 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). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Petitioner states “[a] person having ordinary skill in the art” slip op. at 55

  • Expert testimonyPetitioner expert discountedOther

    “access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01045 · APJ Barry L Grossman · IPR · Remand

  The Board revised “biometric signal” to include physical or behavioral attributes and held claims 1–13 not shown unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2

  • Skill levelSkill level board ownOther
  • Expert testimonyPetitioner expert discountedOther

    “access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Candela Corporation v. Nikolai TankovichNo claims unpatentable
  PTAB · Jun 5, 2024 · IPR2023-00234 · APJ Sheridan K Snedden · IPR · Final written decision

  The Board held claims 1–28 not shown unpatentable because the asserted combinations did not establish simultaneous delivery of overlapping and non-overlapping laser beams.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 19; Ex. 1002 ¶ 77. Patent Owner does not dispute this proposed level of skill, but offers that a “POSA may have alternatively held a degree in electrical engineering.” PO Resp. 10; Ex. 4–10, 13, 15–17. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record, and also consider Patent Owner’s additional proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner

    “In this case, the Specification is devoted to the teaching simultaneous delivery of multiple laser beams. The Specification begins by stating that “[t]here are no lasers or laser handpieces on the market today that can simultaneously deliver two or more wavelengths of laser energy in spacial, fractional form.” Ex. 1001, 1:12–14. The Specification explains that “laser treatment usually requires different modalities of energy in order [to] successfully treat the pathologies to which they are applied,” but that “the sequential application of multiple wavelengths of laser energy compromises the treatment.” Id. at 1:16–25. The Specification then continues to explain various problems associated with the sequential application of multiple wavelengths. Id. at 1:25–52. The Specification concludes its introduction as follows: What is needed in the art therefore is an effective laser therapy system that can simultaneously deliver multiple wavelengths of laser energy through the use of a single laser unit without producing interference between the wavelengths within the treated tissue.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “summarized above, we find Patent Owner to have the better position. In particular, we agree with Patent Owner that the combination of Hsia and Black fail to teach or suggest simultaneously delivering non-overlapping beams. The combination also fails to teach or suggest producing beam patterns that include both overlapping and non-overlapping beams. PO Resp. 34. To begin, while we recognize that Hsia discloses overlapping and non-overlapping treatment patterns, those patterns are achieved by the sequential delivery of laser beams as a user physically moves a single handpiece that delivers a single beam across the skin of a patient. Ex. 1004 ¶ 68, Figs. 8 and 9; Ex. 2001 ¶¶ 73–74. Black does not cure that deficiency as Black does not disclose treatment with non-overlapping beams. Ex. 2001 ¶ 99. Black discloses using a “refractive optics, mirror-based optical delivery device” for the simultaneous delivery of multiple overlapping laser beams. Ex. 1006 ¶¶ 12– 13. The beams align on an optical path and, using different laser beam parameters, deliver treatment at various depths within a combined beam path. Id. ¶¶ 54, 58–59. Thus, while Black may be characterized as creating overlapping beams, we do not find sufficient support for a finding that Black teaches or suggests creating non-overlapping beams for simultaneous delivery, and the claims require both. We also do not find sufficient support for Petitioner’s claim that a POSA would have found it obvious to combine Black and Hsia to simultaneously produce both overlapping beams and nonoverlapping beams, based on the disclosures in these references. See, e.g.,” slip op. at 31

  • BurdenFwd all claims patentableNot shown unpatentable

    “Claims Claims Not 35 U.S.C. § Reference(s)/ Claims Shown Shown Basis Unpatentable Unpatentable 1–28 103 Hsia, Black 1–28 Hsia, Black, 23 103 23 Negus Hsia, Black, 27, 28 103 27, 28 Altshuler Altshuler, 1–28 103 1–28 Black Altshuler, 23 103 23 Black, Negus Overall Outcome 1–28 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has not shown by a preponderance of the evidence that claims 1–28 of the ’481 patent are unpatentable; and” slip op. at 41

  Patent outcomesUS 10,675,481 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,675,481
• SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentable
  PTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28

  Patent outcomesUS 10,626,320 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,626,320
• Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision

  The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 5

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner

    “d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32

  Patent outcomesUS 11,110,087 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,110,087
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01089 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner did not prove claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • Skill levelSkill level board ownOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. slip op. at 60

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41

  • Skill levelSkill level board ownDecided for patent owner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Nov 30, 2023 · IPR2022-01006 · APJ Barry L Grossman · IPR · Final written decision

  The Board held claims 1–17 not unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “6. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. Accordingly, based on the totality of the evidence of record and our” slip op. at 48

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “relationship, involving legally binding contractual relationships between Apple and Petitioner, is sufficient under Taylor to make Apple a privy to this IPR proceeding. Id. Patent Owner also asserts that Apple is a privy to this IPR proceeding because Petitioner is capable of adequately representing Apple’s interests in this IPR proceeding. Id. On the record before us, for purposes of this Decision, we disagree with Patent Owner’s conclusion that Apple is a privy for purposes of this IPR proceeding. Patent Owner ignores the practical consequences of its own actions that precipitated the current situation.” slip op. at 47

  • Skill levelOther

    “not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 53

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). slip op. at 57

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176

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.