- PTAB · Dec 1, 2021 · IPR2021-00943 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 5–9, 11, 12, 16–20, and 22 based on a reasonable likelihood that the combination of the 300 reference, the 321 reference, and Ericsson renders claim 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petition is not materially different from the prior art presented to the Examiner because the basis for the sole challenge in the Petition is a combination of references listed in the IDS. Pet. 3–4. Thus, we determine that the Petition uses “the same or substantially the same” art compared to what was previously presented to the Office, which satisfies part one of the framework. See Advanced Bionics, Paper 6 at 8. 2. Part Two of the Advanced Bionics Framework Under part two, we must determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. at 8. For the reasons discussed in this section,” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Yet Patent Owner does not provide a basis for its definition. By contrast, Petitioner’s definition is supported by the Min declaration. See Pet. 12 (citing Min Decl. ¶ 34). Also, Patent Owner does not specifically explain how its proposed definition affects Petitioner’s obviousness analysis. See Prelim. Resp. 36. Rather, Patent Owner argues “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness.” Id. Considering the types of problems and solutions described in the ’120 Patent and the cited prior art, we preliminarily agree with Petitioner’s proposed definition of the level of ordinary skill in the art. Pet. 12. During trial, however, the parties are encouraged to explain how the differences between Patent Owner’s proposed definition and Petitioner’s affect the obviousness analysis.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Rather, Petitioner’s “only when” construction is adequately supported on this record. Pet. 12–13. Specifically, we preliminarily agree that the first “transmitting” step appears to be independent of the later three “transmitting” steps. Id. at 13. The later three steps cover the potential scenarios other than the first transmitting step in which the UL Grant is that the claimed user equipment must transmit one of the Msg3 buffer data or new data—not both. See id. In this way, the claim language adequately supports Petitioner’s assertion that the “when” clause in the first transmitting step introduces a necessary condition, at this stage and on this record. See id. at 13–14. Thus, we adopt Petitioner’s “only when” construction for the purpose of determining whether to institute. See id.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“Patent Owner’s argument, though, does not fully address Petitioner’s obviousness rationale, which relies on the 321 reference as well as other teachings from several other sources. See Pet. at 32–37. At this stage, we preliminarily agree with Petitioner that the 321 reference does not state what happens if a UE receives two uplink grants during an ongoing random access procedure. Id. at 31. Petitioner asserts that it would have been obvious to transmit Msg3 only when there was Msg3 data to transmit and the UE had received an uplink grant in a random access response. Id. at 33. To be sure, Patent Owner does address Petitioner’s obviousness rationale by arguing that it is based on improper hindsight. Prelim. Resp. 34– 37. Patent Owner argues that Petitioner’s “suggestion that a POSITA would find the solution to the problem of improper transmission of Msg3 data obvious in view of the then-existing draft of the LTE standard is incorrect.” Id. at 34. Patent Owner argues that “[b]y claiming that there was no problem to be solved and that the draft LTE standard already addressed the potential for erroneous Msg3 data transmission, [Petitioner] essentially argues that the inventors and the LTE Working Groups did not know how the standard and based on improper hindsight. Id. at 36–37. At this stage, we determine that Petitioner’s obviousness rationale is adequately supported by the preliminary record: The 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003, § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an uplink grant in a random access response and calls the C-RNTI grant the uplink grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. In at least this way, the 321 reference supports Petitioner’s reasoning. See Pet. 32. Petitioner’s obviousness rationale is further supported by the 300” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,517,120 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-00950 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 18–20, exercising § 314(a) discretion under Fintiv because the ITC investigation was advanced and the preliminary merits were a closer call.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In evaluating whether to do so, we consider the following factors in assessing “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”: 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. Fintiv at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“B. Analysis Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (2018) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that 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”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). The advanced state of either a parallel district court action or a parallel ITC investigation may warrant exercising discretion on behalf of the Director to deny a petition for inter partes review. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner contends that Nokia discloses, “in the context of the disclosed handover operations, performing a contention free . . . RACH procedure (step 5 [of Nokia’s Figure 1]), wherein the identifier information necessary for the UE to communicate with the target base station during the RACH procedure was previously transmitted in a message from the source base station to the UE (e.g., Handover Command, Step 4).” Pet. 31 (citing Ex. 1037 ¶ 92). Petitioner motivates its reasoning for effecting a combination of Nokia with Hu by contending that a person of skill in the art “would recognize that the specific implementation of such a conventional, contention free RACH procedure as referenced in Nokia could be implemented using” a variety of known methods. Id. at 33. Such a person “would also have recognized,” Petitioner further contends, “that using conventional RACH procedures wherein each UE is assigned and uses its own different preamble would make the handover process quicker and more efficient by reducing contention between the mobile station and the other mobile stations on the RACH.” Id. Petitioner relies on such features to argue that “Hu discloses the full implementation level details of how such a conventional, contention free RACH procedure using allocated resources in the form of a dedicated code resource (i.e., a dedicated preamble) is performed.” Id. Patent Owner disputes Petitioner’s reading of Nokia, particularly that it discloses a contention-free RACH procedure. See Prelim. Resp. 36–43. Patent Owner correctly observes that the timing alignment in step 5 of Nokia’s Figure 1 “involves one of two different procedures: a ‘one or two step RACH procedure’ OR a ‘Non contention based access burst.’” Id. at 37. Patent Owner elaborates that, although Nokia teaches that the “UE receives allocation(s)” that can be used in an access burst in the second of these procedures, Nokia “does not even teach what an ‘access burst’ is or how it would be used in a non-contention-based manner—and certainly does not teach or suggest that the non-contention-based manner would involve a RACH procedure.” Id. at 38. Patent Owner further supports its position with “[o]ther contemporaneous submissions by Nokia [that] confirm this and explain what Nokia meant by a contention-free access burst procedure,” as well as LTE standards documents. Id. at 38–43 (citing Ex. 2009, 1–2; Ex. 2010 § 10.1; Ex. 2011 § 10.1.2.1; Ex. 2012 § 10.1.2.1). We have reviewed this evidence, and find on this record that it provides some support for Patent Owner’s position. The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv.” slip op. at 18
§ 103 obviousnessDiscretionary denial - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-00949 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of inter partes review of claims 1–3 and 6–8, exercising § 314(a) discretion under Fintiv because most factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv. 7. Conclusion As noted in Fintiv, we consider the above factors as part of “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. In this instance, most of the factors we consider weigh in favor of exercising discretion to deny institution of an inter partes review, with Fintiv factor 4 weighing only somewhat against. We accordingly exercise that discretion and deny the Petition.” slip op. at 20
Discretionary denial - Google LLC v. Jenam Tech LLCInstitution deniedPTAB · Nov 17, 2021 · PGR2021-00082 · APJ Jason M Repko · PGR · Institution
The Board denied institution because Patent Owner disclaimed the sole challenged claim, and the Board cannot institute review on disclaimed claims.
RulingsInstitution decision- Adverse judgmentDecided for patent owner
“1 In its Preliminary Response, Patent Owner also argues that the disclaimer of claim 1 should not be considered a request for adverse judgment. Prelim. Resp. 7 (citing General Elec. Co. v. United Techs. Corp., Case IPR2017-00491, Paper 9 (July 6, 2017) (designated precedential on Sept. 9, 2019)). In an email to the Board, Petitioner requested additional briefing on this issue. Ex. 3001. In a conference call with the Board, Petitioner argued that the Board should enter adverse judgment in this case, citing Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). Patent Owner opposed Petitioner’s request. Because nothing in Arthrex compels entry of an adverse judgment in this case, we determine that no further briefing on the adverse-judgment issue is necessary.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 37 C.F.R. § 42.207(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o post-grant review will be instituted based on disclaimed claims.” A disclaimer is “considered as part of the original patent” as of the date on which it is” slip op. at 2
NonePatents in suitUS 10,742,774 - Seoul Semiconductor Co., Ltd. / Seoul Semiconductor, Inc. v. Document Security Systems, Inc.All claims unpatentablePTAB · Nov 17, 2021 · IPR2020-00938 · APJ Jason M Repko · IPR · Final written decision
Claims 1–4 and 7 are unpatentable as anticipated by Nichia-614; claims 5 and 6 are unpatentable as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“PO Resp. 9 (quoting Ex. 1007 ¶ 29) (emphasis omitted). Patent Owner does not, however, explain how this difference in experience level would affect our analysis. Indeed, we see nothing in the record that indicates that viewing the ordinarily skilled artisan as having two more years of experience would change the outcome here. To the extent necessary, we apply Patent Owner’s adopted definition above because it is consistent with the ’119 patent and the asserted prior art and is supported by the Doolittle Declaration submitted by Petitioner. But our analysis would be the same under either definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“16. In particular, the patentee has not defined “conformal” or “substantially uniform” in the patent’s written description. See id. In fact, the terms do not appear in the Specification as originally filed. Id. at 13–14 (citing Ex. 1002, 152–162). And we see no other evidence of lexicography or disavowal with respect to these terms. See Ex. 1001. So, consistent with Petitioner’s articulation of the case law, the terms “conformal” and “substantially uniform” should be given “their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” See Thorner v. Sony Comp. Ent. Amer., 669 F.3d 1362, 1365 (Fed. Cir. 2012), cited in Pet. Reply 3. As evidence of the “ordinary usage,” Petitioner cites the patent’s” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“To be sure, a patent “specification may reveal a special definition given to a claim term.” Phillips, 415 F.3d at 1316. Or it may reveal “an intentional disclaimer, or disavowal, of claim scope.” Id. “The patentee’s lexicography must, of course, appear ‘with reasonable clarity, deliberateness, and precision’ before it can affect the claim.’” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The patentee can disavow claim scope with language in the specification or the prosecution history. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.” Id. For the phrase “layer of phosphor particles” recited in the claims here, we see no reasonably clear, deliberate, and precise lexicography in the ’119 patent’s written description. When read in context, the sentence that Patent Owner characterizes as definitional simply explains that the drawings are not to scale: To simplify the drawings and better explain the present invention, the above figures show layers of relatively large phosphor particles that are only a few particles thick. However, it is to be understood that the phosphor layers are actually uniform layers constructed from much smaller particles, and the layers are many particles thick.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Patent Owner also quotes the sentence that reads in full: “In the proposed invention, a wavelength converting material such as phosphor is laid over the LED chip in a manner such that substantially all the phosphor particles are in contact with the LED chip and the walls of the cavity where the LED is mounted.” Ex. 1001, 3:16–19, quoted in PO Resp. 11 (emphasis added). The written description also discloses that “the phosphor particles all settle down and are deposited around the LED chip and at least some portions of the cavity walls.” Id. at 4:24–26, quoted in PO Resp. 12. Yet these sentences do not define the term “layer of phosphor” with the reasonable clarity, deliberateness, and precision required to limit the claim as Patent Owner proposes. In fact, the cited passages do not even explicitly use the term “layer of phosphor.” Id. Instead, these sentences describe a single, exemplary embodiment, which is not definitional. See id. Lastly, Patent Owner points to the drawings to support its position. PO Resp. 12 (citing Ex. 1001, Figs. 2–4, 6). But the drawings are merely exemplary, non-limiting embodiments. See Ex. 1001, 5:20–24; supra § II.C.1.b(1). In sum, we see no reason to interpret the claimed “layer of phosphor particles” as limited to the phosphor particles themselves. And we see no requirement in the claims that a “conformal layer of phosphor particles covering said die and in direct contact therewith” requires that the bottom layer of phosphor particles directly contact the LED, as Patent Owner has proposed. PO Resp. 11–13. Rather, consistent with the patent’s written description and the evidence of record, we determine that the recited “layer of phosphor particles” simply requires a layer that includes phosphor particles, without limitation to the position of the bottom phosphor particles relative to the LED.” slip op. at 14
Patent outcomesUS 7,315,119 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,315,119 - Nichia Corporation v. Document Security Systems, Inc.No claims unpatentablePTAB · Nov 16, 2021 · IPR2020-00908 · APJ Jason M Repko · IPR · Final written decision
Claims 1–4, 8, and 11 were not shown unpatentable because Petitioner’s planar construction of “mounting surface” was unsupported and the references did not disclose the claimed surface.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art According to Petitioner, “a person of ordinary skill in the art (‘POSA’) would have had at least a B.S. in mechanical or electrical engineering or a related field, and four [years of] experience designing or developing semiconductor—including LED—packages.” Pet. 13 (citing Shealy Decl. ¶ 31). Petitioner adds that “a higher education or skill level might make up for less experience, and vice-versa.” Id. at 13–14. Patent Owner does not propose an alternative assessment but states: “For the purposes of this IPR proceeding, Patent Owner adopts Petitioner’s definition of level of ordinary skill.” PO Resp. 7 (citing Baker Decl. ¶ 26). We apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of this decision, we need only address the proper construction of “mounting surface,” which is disputed by the parties. Here, Patent Owner’s argument and evidence produced during trial show that Petitioner’s construction of “mounting surface” is not in accordance with the ordinary and customary meaning as would have been understood by one of ordinary skill in the art. In particular, we agree with Patent Owner that “the mounting surface having a plurality of recesses,” as recited in claim 1, means that the recesses are in the mounting surface itself. PO Resp. 10–11. As we discuss further here, this requirement cannot be satisfied by a single planar surface, as used in Petitioner’s analysis. See, e.g., Pet. 18. Both parties acknowledge the argument that the claimed recesses could be interpreted in at least two ways: The recesses could be (1) only in the packaged body, excluding the contacts; or (2) in the device as a whole. PO Resp. 12 n.6; see also Pet. 18–19 (reviewing the second interpretation). Under both interpretations, Petitioner asks the Board to construe the mounting surface as a plane. See Pet. 18–19. We need not resolve which” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“For the reasons discussed in the Claim Construction Section, we disagree that the recited mounting surface can be a plane and still satisfy all the claim limitations. Supra § II.B. In particular, we agree with Patent Owner that Petitioner’s planar mounting surface does not include “recesses” at the side edges of the body as the claim requires. PO Resp. 15. Rather, the planar surface identified by Petitioner sits below the recesses in Kim’s device—i.e., “the depressions or indentations in molded resin package body 37” or the device as a whole. Pet. 41–42; Ex. 1004, Figs. 1, 3. Petitioner argues that, even under Dr. Baker’s analysis, Kim discloses the claimed mounting surface. Pet. Reply 10–11 (citing Ex. 1027). Dr. Baker’s analysis, however, is not consistent with the written description or the claims. Supra § II.B. In its challenge, Petitioner compares Kim’s device to the embodiment shown in Figure 4A of the ’040 patent. See Pet. 38–53. As discussed in the Claim Construction Section, however, of the challenged claim. Supra § II.B. Contrary to the claim’s requirement that the device itself comprise a mounting surface with “recesses and electrical contacts [that] are sized to provide offsets between said mounting surface and said electrical contacts,” both Kim’s device and the Figure 4A embodiment show recesses between the device and a flat surface on which the device is mounted. Compare Ex. 1004, Figs. 1, 3, with Ex. 1001, Fig. 4A, 5:11–14. Thus, Petitioner has not shown by a preponderance of the evidence that claim 1 is unpatentable as anticipated by Kim. Claims 2, 3, and 11 also require a “mounting surface” because those” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“D. Obviousness over Kim and Shirahata Petitioner asserts that claim 8 is unpatentable as obvious over Kim and Shirahata. Pet. 54–59. Claim 8 depends from claim 1. Ex. 1001, 12:3–5. This ground relies on Kim for the limitations of claim 1, including the recited “mounting surface.” Pet. 54–59. Petitioner has not shown that Kim teaches the mounting surface in claim 1. Supra § II.C. Thus, Petitioner has not shown by a preponderance of the evidence that claim 8 is unpatentable as obvious over Kim and Shirahata.” slip op. at 18
Patent outcomesUS 6,879,040 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,879,040 - Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision
Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.
RulingsFinal written decision- Expert testimonyOther
“Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92
- ExcludeMotion to exclude, deniedDenied
“discussed below, the Motion is denied.” slip op. at 94
Patent outcomesUS 9,007,015 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,007,015 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00728 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)). For purposes of this Decision, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’036 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties address the construction of various claim terms. Pet. 12–13; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00727 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 43–83 unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 21–22 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 22.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For at least these reasons, based on the record before us, Petitioner does not make an adequate showing, for purposes of instituting an inter partes review, that the combination of Miesterfeld, Wense, OSEK-COM, and OSEK-NM teaches or suggests all the limitations of claim 1. Claims 43, 45–52, 54–56, 58–60, 63–70, 77, and 80–82 depend from claim 1. See Pet. 45–71. Therefore, we conclude the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claims 43, 45–52, 54–56, 58–60, 63–70, 77, and 80–82 of the ’036 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness over the combination of Miesterfeld, Wense, OSEK-COM, and OSEK-NM. E. Remaining Obviousness Grounds Petitioner further challenges claims 44, 53, 57, 61, 62, and 73–76 by adding the teachings of OSEK-OS to those of the references discussed above, challenges claims 71 and 72 by adding the teachings of OSEK-OIL to those of the references discussed above, challenges claims 78 and 79 by adding the teachings of Reinold to those of the references discussed above, and challenges claim 83 by adding the teachings of OSEK-FTCom to those of the references discussed above. Pet. 69–84. Petitioner relies on OSEK-OS, OSEK-OIL, Reinold, and OSEK-FTCom only for teaching limitations of dependent claims, not for teaching the subject matter of independent claim 1, and therefore these additional references do not remedy the deficiencies addressed above with respect to claim 1. Id. Thus, for the same reasons discussed above, the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 44, 53, 57, 61, 62, 71–76, 78, 79, and 83 are unpatentable as obvious over the asserted combinations of references.” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00726 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–42, 102–108, 121, and 126 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art at the time of the invention would have had “at least . . . a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and at least two years of industry experience in the field of distributed computing or automotive engineering, or equivalent experience, education, or both.” Pet. 10 (citing Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties address the construction of various claim terms. Pet. 10–11; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036
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.