- Stmicroelectronics, Inc. v. Optical Licensing, LLCAdverse judgmentPTAB · Dec 22, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, entered a final written decision, cancelled oral argument, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Here, Patent Owner has expressly requested entry of adverse judgment. Patent Owner’s request for adverse judgment is granted.” slip op. at 2
NonePatents in suitUS 6,791,898 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01165 · APJ Hubert C Lorin · IPR · Institution
Institution was denied on both obviousness grounds because the petition did not show that the cited art teaches sensing a pumping system’s output rate, for claims 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314(a) (2021).” slip op. at 2
- BurdenDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the 3 The parties have not directed us to any such objective evidence. Petitioner indicates that “Patent Owner has advanced certain ‘secondary indicia’ arguments tied to the claimed invention of the ’949 Patent in an interrogatory response in the USWS litigation.” Pet. 62. But, according to Petitioner, “the record in the USWS litigation has not been fully developed showing objective indicia of nonobviousness.” Id. Patent Owner has not advanced any secondary considerations in the Preliminary Response. See generally Prelim. Resp. grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100 (2021); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Petitioner does not submit constructions for any claim terms. Pet. 12. “Patent Owner does not dispute Petitioner’s constructions for the purposes of [the] preliminary response.” Prelim. Resp. 1–2. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the challenged claims of the ’949 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. § 103 throughout this Decision. 2 “HAL-FCP” refers to the combined “two (2) Society of Petroleum Engineers (“SPE”) publications detailing Phase I (SPE17315) and Phase II (SPE-26220) of a Fracturing Process Control and Automation design.” Pet. 5–6; Exs. 1005 and 1006, respectively. Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We determine that no claims require express construction for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,836,949 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01162 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–12 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). C. Level of Ordinary Skill in the Art slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“PHOSITA”) in the relevant field relating to the ʼ333 Patent, in December 2011, would have a Bachelor of Science in Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with corrosion science. Pet. 12–13. Patent Owner applies Petitioner’s definition only for the purposes of the Preliminary Response. Prelim. Resp. 18. 6 The parties have not directed us to any such objective evidence. Petitioner indicates that “Patent Owner has advanced certain ‘secondary indicia’ arguments tied to the claimed invention of the ’333 Patent in an interrogatory response in the USWS litigation.” Pet. 40. But, according to Petitioner, “the record in the USWS litigation has not been fully developed showing objective indicia of nonobviousness.” Id. Patent Owner has not advanced any secondary considerations in the Preliminary Response. See generally Prelim. Resp. appears reasonable, and we adopt that definition for our analysis in this decision. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. We determine that the level reflected in the prior art is consistent with Petitioner’s definition. D. Overview of the Prior Art References” slip op. at 10
- BurdenNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,435,333 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01164 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the claims obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’695 patent, and we do not institute inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“limitations 56[d] (Pet. 37) and 84[e] (Pet. 11)), which requires “using a transfer pump to transfer the fluid to a down hole pump,” Petitioner argues that Heilman discloses “that the final fracturing fluid is directed to a pumping grid 111 and from the pumping grid 111 to two multiple manifold trailers 701 and 702” and a POSITA “would have understood that the pumping grid 111 transfers the fracturing fluid to the pump trucks 703” and in the alternative “would know a portion of the pumps of the pumping grid 111 are transfer pumps and a portion of another portion of the pumps of the pumping grid 111 are downhole pumps.” Pet. 14–16 (citing Ex. 1004 ¶¶ 26, 28, 32; Ex. 1003 generally). As Patent Owner argues, and as we agree, Heilman’s referenced disclosure only describes “that pumping grid 111 is connected to and provides fluid to one or more manifolds,” i.e., 107, 405, 701, or 702, but “there is no indication in Heilman that any of the treatment fluid is transferred from pumping grid 111 to pump trucks 703. Prelim. Resp. 32–33. We also agree that Heilman does not show a “portion of the pumps” being a certain type of pump, i.e. a downhole pump or a transfer pump. Id. at 33–34. We also note the prosecution history of the ’695 Patent, in which the USPTO specifically found that “HEILMAN fails to teach or suggest a transfer pump to transfer the fluid to a downhole pump.” Ex. 1002, 72 (Detailed Reissue Action). Petitioner has not provided any compelling rationale for why we should revisit this determination, or any reasoning that would persuade us to reach a different conclusion.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also relies on the testimony of Mr. Ely, but Mr. Ely’s testimony similarly falls short. Prelim. Resp. 39 (comparing Pet. 26–27, 32, 35, 40, 42, with Ex. 1003 ¶¶ 83–84, 94, 100, 121, 128). As noted above, Petitioner’s citations to Mr. Ely’s testimony in refer generally to “Ex. 1003” without more particularity, hindering the Board’s ability to determine on which portions of Mr. Ely’s testimony Petitioner intends to rely. See, e.g., Pet. 27–31 (Ground 2), 31–34 (Ground 3), 34–37 (Ground 4). To the extent we have reviewed Mr. Ely’s testimony in connection with the Petition, Mr. Ely’s testimony is entitled to little weight because it fails to explain how one of ordinary skill would have been motivated to make the proposed combination, and it is not otherwise apparent that it does. See 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 Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01163 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 9
- BurdenDenied
“Here, Petitioner’s approach of arguing that every limitation in the claims challenged under Ground 1 can be both anticipated by and obvious over Koederitz fails to identify with sufficient specificity the approach that Petitioner intends to invoke. Although arguing in the alternative is generally permissible, in this case, both the Petition and Petitioner’s expert fail to explain in adequate detail which, why or how the identified elements of Koederitz, or the addition of the knowledge of one of ordinary skill in the art to Koederitz’s elements, meet the limitations of the challenged claims. In each subsection discussing the limitations of claim 1, Petitioner relies on Koederitz, seemingly individually, but then adds language indicating that, with respect to limitations 1[c], 1[d], and 1[e], a “POSITA would understand that . . .” or “SPC techniques would be understood by a POSITA to . . . .” Pet. 16–19. This leaves it unclear whether Petitioner intends to rely on Koederitz as an anticipation reference, or Koederitz as an obviousness reference, or something else.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“adequately explained how Koederitz’s sensors meet the limitations of at least independent claims 1, 9, 18, and 22. Patent Owner argues that Koederitz discloses “redundant sensor[s] at each respective sensed position, such that each sensing act is performed by two or more sensors at each location.” Prelim. Resp. 30 (citing Ex. 1004, 8:4–7, [sic] 7:5–9). With respect to limitation 1[b], “monitoring a plurality of signals with a computerbased monitoring system, each signal being associated with one of the three or more oilfield equipment subsystems,” Petitioner relies on Koederitz’s disclosure that a “programmable system controller 100 and one or more sensors 80, 82, 84, and 95” may “sense and/or receive information pertaining to one or more well bore and/or drilling parameters.” Pet. 15–16 (citing Ex. 1004, Abstract, 6:19–24, 6:37–44). Petitioner further argues that Koederitz’s disclosure of different parameters “which may be sensed and input to the controller 100” may include, i.e., mud tank volume/level, mud pump rate and/or stroke counter, fluid pressure in the mud system and the drill string, well bore pressure near the surface, and/or the positions of the choke and the blowout preventers, and these are the “type of oilfield equipment subsystems monitored.” Id. at 16 (citing Ex. 1004, 6:37–44). As argued by Patent Owner, however, the portion of Koederitz that discusses comparison of signals from sensors 80, 82, 84, 94, and 95 may pertain only to “duplicate sensors that monitor repeat signals” from the same location. Prelim. Resp. 30–31. The portion of Koederitz that discusses comparison of sensed signals relied upon by Petitioner (i.e. signals from sensors 80, 82, 84, 94, and 95) discloses that the “sensed information from each sensor at a respective position may be compared to the other sensed information at that respective position to determine the accuracy, variance, and/or reliability of the sensed value.” Ex. 1004, 7:9–13; see also id. at 10:66–11:2 (“well bore annulus pressure sensor 84 and the drill pipe pressure sensor 80 may include one or more additional respective sensors to provide a second measurement or sensing of the respective pressure being sensed”). This does not support Petitioner’s argument that each of these signals are compared among each other, and therefore among different subsystems, as required by claim 1. Rather, it appears that Koederitz discloses comparing duplicate signals from the same position, and compares those duplicate signals to each other to ensure accuracy of the signal received from that position. Petitioner does not, therefore, clearly articulate how Koederitz’s sensing and comparison of its redundant signals maps to the required “each signal being associated with one of the three or more oilfield equipment subsystems” limitation of claim 1[b] or the “comparing at least some of the signals” associated with one of the three or more oilfield equipment subsystems limitation of claim 1[d]. Additionally, with respect to limitation 1[e], which requires indicating that “at least one oilfield equipment subsystem’s signal . . . does not agree with at least two other oilfield equipment subsystems’ signals,” Petitioner generalizes that the method and system of Koederitz identifies sensor failures, erroneous data, and sensor inconsistencies with in a system with a multitude of equipment subsystems and therefore “necessarily teaches the step of” limitation 1[e]. Pet. 18–19; Ex. 1003 ¶ 61. This explanation also fails to find support in Koederitz’s disclosure of monitoring duplicate signals from the same location, as discussed above, and fails to articulate with sufficient clarity how these disclosures anticipate or necessarily teach the disclosures of limitation 1[e].” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,574,325 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 7,894,837 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - PTAB · Dec 14, 2022 · IPR2022-01309 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Volkswagen’s motion to join the Apple IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the Apple IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. We find that the merits of the Petition warrant institution.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered the issues, we agree with Petitioner that joinder will promote efficiency, because joinder will reduce the number of parallel challenges to the ’392 patent. Id. at 2. We also find that, because Petitioner will participate in an “understudy role,” joinder will simplify the schedule and eliminate the likelihood of duplicative efforts without prejudice to Patent Owner. Id. at 10–12.” slip op. at 10
NonePatents in suitUS 10,193,392 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 unpatentable after the Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner addressed the present case and stated on the record that they are not contesting a final written decision or adverse judgment in the related cases in which Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that” slip op. at 2
NonePatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner and determined claims 22, 23, and 31–40 unpatentable based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870
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.