- PTAB · Dec 12, 2024 · IPR2024-00986 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 3, 4, and 6 on all grounds, finding a reasonable likelihood that the claims are unpatentable over Shin despite concerns about Ground 2.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner applies Petitioner’s definition. Prelim. Resp. 10 (citing Pet. 7–8). Petitioner’s definition appears consistent with the challenged patent and the prior art of record. See Pet. 7–8. Thus, we apply that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes giving each term its plain and ordinary meaning. Pet. 7. Patent Owner agrees. Prelim. Resp. 10. On the current record, no terms are in controversy, and the Board does not need to construe any term here.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightOther
“We agree that Petitioner’s obviousness rationale appears to be based on the challenged patent’s disclosure—at least in part. See Pet. 46–47 (citing Ex. 1001, 1:25–50), 61 (citing Ex. 1001, 2:34–40). Dr. Mark P. Mahon’s corresponding testimony relies on the same parts of the challenged patent, adding little additional technical reasoning or support from the prior art of 8 Petitioner cites “Section 5.8a.1.3.”, but the quoted passage appears in Section 5.8.1.3. Pet. 60 (emphasis added). challenged patent itself raises the possibility that Petitioner has succumbed to impermissible hindsight bias. See Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)) (discussing the “the distortion caused by hindsight bias”); see also InTouch Tech., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). Even so, the preliminary record also indicates that it may be inherent in an NB-IoT system that “DCI indicating an SC-MCCH change notification must be transmitted in a different subframe from the DCI indicating a resource for the updated SC-MCCH information.” Pet. 61. This is a factual issue best resolved on a fully developed record.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for patent owner
“We see no basis for using China Standard Time here. “The time and date of receipt of an application filed via EFS-Web is the local time and date in USPTO headquarters in Alexandria, Virginia.” Manual of Patent Examining Procedure (MPEP) § 502.05 I.C.2 (9th ed. Rev. 07.2015, Nov. 2015) (emphasis added).7 The MPEP provides an example of how an application filed from the Pacific Time Zone would receive the filing date as of the USPTO’s local time: For example, if an applicant in California officially files a patent application with the USPTO through EFS-Web by clicking on the SUBMIT button at 10 p.m. Pacific Time in California on May 1, that application would be officially received by the USPTO at 1 a.m., local time (i.e., Eastern Daylight Time) on May 2. Accordingly, the application would receive a filing date of May 2. Id. Thus, we disagree with Patent Owner’s argument that Fujishiro is not prior art for this reason. Prelim. Resp. 28–29.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,785,764 - PTAB · Dec 12, 2024 · IPR2024-00985 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 8–14 and 16 on all asserted grounds, finding compelling evidence that the challenges could establish unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“1–5 weigh in favor of exercising our discretion to deny institution. For the reasons discussed below, we conclude that Fintiv factor 1 is neutral, factors 2, 3, and 5 weigh in favor of denial, and factor 4 weighs marginally against discretionary denial. On balance, the Fintiv factors weigh in favor of denying institution. Because the Fintiv factors favor denial of institution, we must also determine whether the Petition presents compelling merits. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or “POSITA”) would have been “familiar with wireless communications networks, equipment, and integrated circuit chips, and would have had at least a working knowledge of communication protocols used in LTE and 5G radio access networks (“RAN”).” Pet. 11–12. According to Petitioner, a POSA would have “at least a Bachelor’s degree in Electrical Engineering or an equivalent field, and at least two years of work experience in design, development, and/or testing wireless telecommunication systems” as well as “familiarity with the wireless standards and protocols related to data transmission and network management.” Id. at 12. At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 10 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Because Petitioner’s description of a POSA appears consistent with the subject matter of the ’566 patent and with the prior art of record and we apply it for purposes of this decision, with the exception of the qualifier “at least” which expand the ranges of education and experience indefinitely with no upper bound. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find Patent Owner’s argument that Petitioner did not meet its obligation to explain how the claims should be construed unavailing because, on the present record, we do not find a material difference between Petitioner’s assertion in this proceeding that the claims should be given their plain and ordinary meaning and the claim constructions that Petitioner agreed to in the district court litigation. We do not find it necessary to expressly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); 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’”). We address whether the Petitioner has sufficiently shown that the cited art meets the limitations at issue infra § III.E.1.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“G. Conclusion on Compelling Merits For the reasons set forth above, we determine that Grounds 1–3 of the Petition present a compelling meritorious challenge. That is, “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. As the Director explains in OpenSky, however, this finding “should not be taken as a signal to the ultimate conclusion after trial” because “all relevant evidence likely will not have been adduced at the point of institution [and] trial should produce additional evidence that may support a determination in the Final Written Decision that unpatentability has not been adequately proven.” OpenSky, IPR2021-01064, Paper 102 at 49– 50. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the accompanying evidence, we find that the Petition presents compelling evidence of the unpatentability of the challenged claims. Accordingly, we grant Petitioners request that we institute inter partes review of claims 8–14 and 16 of the ’566 patent.” slip op. at 25
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 10,601,566 - PTAB · Dec 11, 2024 · IPR2024-00848 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64, finding a reasonable likelihood of unpatentability on all challenged grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has applied Petitioner’s description of an ordinarily skilled artisan because the Preliminary Response “does not depend on this skill level.” Prelim. Resp. 27. Patent Owner “reserves the right to argue in favor of different level of skill should trial be instituted.” Id. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’808 patent as well as the asserted references. See Ex. 1003 ¶ 24.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on the current record, we agree with the parties that the term “skip coding mode” includes “a coding mode in which a zero (non-active) motion vector or a non-zero (active) motion vector is associated with each skip mode macroblock, depending on the characteristics of the motion in image segments surrounding the macroblock in question.” See Ex. 1001, 17:45–52; Ex. 1022, 5–10, 15; Pet. 12–14; Prelim. Resp. 29. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no other claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Karczewicz teaches limitation 10a. See Pet. 17–25; Ex. 1003 ¶¶ 79, 155–174. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 158–161, 164, 169, 170–171; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 169. Karczewicz also discloses “assigning” these “coding options” or “coding modes” based on a rate-distortion, best-match evaluation as follows: “a comparison between the amount of data of required a) to transmit motion coefficient data determined specifically for the second segment and b) that required if the second segment’s motion vector field is determined from a projection of the motion model of the first segment plus some ‘refinement’ information.” Ex. 1006, 15:15–20; see id. at 14:12–17, 15:22–25, 17:2–4, 19:2–5; Ex. 1003 ¶ 159. Based on the current record, an ordinarily skilled artisan would have found it obvious to combine these “coding options” or “coding modes” because the combination “minimizes the number of bits needed to encode the segment (e.g., utilizing the zero motion vector when appropriate, otherwise utilizing the prediction motion vector field, without refinement, when encoding motion information for the segment).” Ex. 1003 ¶ 170.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - PTAB · Dec 11, 2024 · IPR2024-00847 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65, finding a reasonable likelihood of unpatentability on the petition’s § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Karczewicz teaches limitation 1a. See Pet. 17–24; Ex. 1003 ¶¶ 79, 93–115. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 96–99, 102, 110, 112–113; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 111.” slip op. at 31
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“See Pet. 2 n.2, 3–4; Prelim. Resp. 18, 37 n.13. Patent Owner relies on the ’072 provisional to antedate Frojdh. Prelim. Resp. 37 & n.13. If a patent owner relies on an earlier application to antedate a reference, the patent owner must “show not only the existence of the earlier application, but why the written description in the earlier application supports the claim,” i.e., “all the limitations” in the claim. Tech. Licensing, 545 F.3d at 1327. Although Patent Owner notes that the ’808 patent claims the benefit of priority to the ’072 provisional’s March 15, 2002, filing date, Patent Owner does not the show why the ’072 provisional’s written description supports any of the challenged claims. See Prelim. Resp. 12–24, 37–39, 37 n.13. Based on the current record, Patent Owner has not shouldered its burden to antedate Frojdh’s November 27, 2002, filing date. See id. Hence, based on the current record, Petitioner establishes a reasonable likelihood that Frojdh qualifies as prior art because Frojdh’s November 27, 2002, filing date precedes the ’549 application’s March 14, 2003, filing date. See Ex. 1001, code (22); Ex. 1007, code (22).” slip op. at 46
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“how the combined disclosures in Frojdh and H.263 teach the claimed subject matter. See Pet. 65–75. Further, Petitioner identifies reasons that would have prompted an ordinarily skilled artisan to combine Frojdh’s teachings with H.263’s teachings with a reasonable expectation of success in achieving the claimed subject matter. See id. at 61–64. Dr. Havlicek’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 303–337.” slip op. at 61
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - PTAB · Dec 11, 2024 · IPR2024-00951 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1–5 on all petition grounds, finding compelling evidence of unpatentability based on Wang and Yang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review under particular circumstances, but not requiring institution under any circumstances).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. On balance, we conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether, on this preliminary record, the merits are compelling. CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5; Guidance Memo 3–5.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“In addition, Petitioner asserts that, to the extent Wang does not disclose limitation 3.3, it would have been obvious over Wang and the POSA’s knowledge of the art. According to Petitioner, and Petitioner’s declarant, Dr. Mahon, it was “well known . . . that TBs could be . . . subdivided in CBs or CBGs and that UEs could transmit HARQ-ACK bits on either a TB or CBG basis to improve the efficiency of the system and potentially prevent the need for retransmission of an entire TB whenever a NACK signal is received.” Pet. 33–34; Ex. 1003 ¶ 281. Petitioner asserts that it was also known that it was desirable to transmit one HARQ-ACK per TB in some instances and one HARQ-ACK bit per CBG in other instances. Id. Petitioner explains that there are a limited number of ways to “distinguish between one HARQ-ACK transmission method and another,” and therefore the POSA would “immediately recognize that one such distinguishing characteristic to devise such a system around is search space configuration, such that one HARQ-ACK bit is transmitted per TB in one search space configuration (e.g., CSS), while one HARQ-ACK bit is transmitted per CBG in another search space configuration.” Id.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,531,443 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Dec 10, 2024 · IPR2024-00983 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–6, 10, 17, 19, and 20 for all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner has stated that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00983 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00983 for any claim of the patent.” Ex. 1017 (citing Sotera, IPR2020-01019, Paper 12). Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–6, 10, 17, 19, and 20 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with the court and the parties in the Apple Litigation “that ‘control component’ is a nonce phrase tantamount to using the word ‘means.’” Ex. 2002, 19 (citing Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022)). We also agree that the ’882 specification links the stated function of the control component requirement with the direct sensing of position and velocity algorithm depicted in Figure 45, discussed above in Section II.C. Ex. 1013, 17; Ex. 2001, 10; Ex. 2002, 40.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,152,882 - PTAB · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,557 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - PTAB · Nov 7, 2024 · IPR2024-00605 · APJ Jameson Lee · IPR · Institution
Instituted review of claims 9–14, 23–28, and 30 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings 13 Han, Woo-Jin, et al., Improved Video Compression Efficiency Through Flexible Unit Representation and Corresponding Extension of Coding Tools, 20 IEEE Transactions on Circuits and Systems for Video Technology 1709 (2010). 14 Tai, Shen-Chuan, et al., A Multi-Pass True Motion Estimation Scheme with Motion Vector Propagation for Frame Rate Up-Conversion Applications, 4 Journal of Display Technology 188 (2008). 15 Huang, Ai-Mei, et al., A Multistage Motion Vector Processing Method for Motion-Compensated Frame Interpolation, 17 IEEE Transactions on Image Processing 694 (2008). relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses. Patent Owner also does not explain how it combines Han, Tai, and Huang to provide the same teachings relied on from Rusert by Petitioner.16” slip op. at 65
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5 which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 69
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Creusere, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 21 (citing Ex. 1003 ¶¶ 57–59). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 31. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - PTAB · Nov 7, 2024 · IPR2024-00604 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1–8, 15–22, and 29 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim based on the Rusert grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses.” slip op. at 63
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5, which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 67
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714
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.