- PTAB · Dec 8, 2023 · IPR2023-00946 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–4, 8, 10, 11, and 17–19 on all asserted grounds, based on 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) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. court has set a trial date for February 20, 2024. Pet. 4.5 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Petitioner includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Patent Owner does not. Compare Pet. 4–5, with Prelim. Resp. 11. At this stage, Patent Owner and its expert Dr. Abowd do not say if, or why, they disagree with this part of Petitioner’s articulation. See Prelim. Resp. 11–12; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Petitioner’s proposal is consistent with the types of technical problems that the ’217 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:25–48, 6:38–50. And because the remainder of Petitioner’s proposal is substantially undisputed, we adopt Petitioner’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Patent Owner may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“that the applicant intended to limit a “manipulatable input device” to the physical devices identified in the Specification, and therefore exclude the identified physical objects. To the extent Patent Owner is arguing that the amendment replacing “peripheral configured to be manipulated by the user” with “manipulatable input devices” was intended to disclaim physical objects from the scope of the claims, Patent Owner has not demonstrated that the amendment amounts to a “clear and unmistakable” disavowal. See Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1141 (Fed. Cir. 2021) (Prosecution disclaimer “attaches if a patentee ‘has that is ‘clear and unmistakable.’” (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324–26 (Fed. Cir. 2003)). Here, the amendment does not appear, based on the preliminary evidence, to be an unambiguous disavowal because it uses a different term (“manipulatable input device”) than the term from the Specification (“physical device”). Moreover, applicant’s remarks accompanying the amendment do not state that the amendment was intended to distinguish peripherals that are physical objects from peripherals that are physical devices; nor do the remarks state that the amendment was intended to exclude physical object peripherals from the scope of the claims. See Ex. 1012, 342–47.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,727,217 - PTAB · Dec 7, 2023 · IPR2023-00944 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23 based on a reasonable likelihood of obviousness over Douris and Rodriguez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’222 patent. Accordingly, we institute an inter partes review as to the challenged claims on the unpatentability ground asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also find Petitioner’s reasons to combine Douris and Rodriguez persuasive for the purposes of institution. We agree that the combination would have provided an effective way of getting the user’s attention and would have been superior to the video or audio feedback disclosed in Douris in some situations, for example, when a quiet environment must be observed or when it is too noisy. See Pet. 23–24 (citing Ex. 1002 ¶ 73). Dr. Cooperstock testifies that in view of the audio overlay information disclosed by Douris as beneficial in certain situations, “[a]n ordinarily skilled artisan would have appreciated that the same advantage attaches to haptic feedback, as it would have provided a third modality to present information to the user—the sense of touch—without impacting the user’s field of vision.” Ex. 1002 ¶ 73. At this stage, we are persuaded by Dr. Cooperstock’s testimony and we determine that Petitioner provides an adequate reason for one of ordinary skill in the art to have modified Douris’s KSR, 550 U.S. at 420 (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). We are also persuaded at this stage that person of ordinary skill in the art would have had a reasonable expectation that the combination would have been successful. Dr. Cooperstock testifies that the use of control signals to provide haptic feedback in augmented reality systems was well-known before March 2013. Ex. 1002 ¶ 74 (citing Ex. 1004 ¶¶ 3, 9–10). He further testifies that “Rodriguez also identifies a number of commercially available, off-the-shelf components and toolkits for implementing haptics in mobile devices,” and that Rodriguez’s descriptions are sufficient for implementing the detailed functionality without undue experimentation. Id. (citing Ex. 1004 ¶¶ 3, 9–10, 71, 98); Pet. 24. Rodriguez discloses multiple Software Development Kits that would have allowed skilled artisans to develop software to control the haptic actuators. Ex. 1004 ¶ 71. On this record, we find Dr. Cooperstock’s testimony consistent with Rodriguez and persuasive to show that a person of ordinary skill in the art would have found the prior art disclosures adequate to implement Petitioner’s proposed combination.8 Thus, Petitioner sufficiently establishes that the combination of Douris and Rodriguez teaches this limitation.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner acknowledges that in the related district court case, the court has set a trial date of February 20, 2024. Pet. 4.10 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also” slip op. at 40
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,269,222 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00943 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–4, 6–8, and 11–14 on all petition grounds after finding a reasonable likelihood that claims 1 and 11 are obvious over Poupyrev and Yun.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’524 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Meta argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction, including implementation of computerbased systems and software for providing haptic feedback effects to a user.” Pet. 4–5 (citing Ex. 1002 ¶¶ 12–13). At this stage, Immersion does not contest this definition of the level of ordinary skill. See Prelim. Resp. 9. Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’524 patent, we adopt Meta’s articulation of the level of ordinary skill for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See 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))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,896,524 - PTAB · Dec 6, 2023 · IPR2023-00945 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–3, 7–10, 14–17, and 20 on all petition grounds; Meta showed a reasonable likelihood of prevailing on obviousness over Nogami.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel 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.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion as to Claim 1 For the above reasons, we determine that Meta has shown sufficiently that Nogami teaches all the limitations of claim 1, and that based on Nogami’s teachings, a person of ordinary skill in the art would have had reason to make a system as recited in claim 1. We therefore determine that Meta is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Nogami.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Meta includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Immersion does not. Compare Pet. 4–5, with Prelim. Resp. 9. At this stage, Immersion and its expert Dr. Abowd do not say if, or why, it disagrees with this part of Meta’s articulation. See Prelim. Resp. 8–9; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Meta’s proposal is consistent with the types of technical problems that the ’143 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:35–58, 6:48–60. And because the remainder of Meta’s proposal is substantially undisputed, we adopt Meta’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Immersion may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the preliminary record, we have not identified any claim terms, including “real space,” that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See 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))). Accordingly, we analyze the claim language below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,664,143 - PTAB · Dec 6, 2023 · IPR2023-00947 · APJ Michael R Zecher · IPR · Institution
Instituted IPR on claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Meta has provided a Sotera stipulation. Pet. 4; see also Prelim. Resp. 29 (Immersion acknowledging that Meta offered a Sotera stipulation). We do not agree with Immersion’s argument that we can effectively ignore the interim guidance in the Director’s Memo because, prior to her guidance, another Board panel did not find a Sotera stipulation to be sufficient to overcome a trial date scheduled significantly before the projected due date for a final written decision. Prelim. Resp. 29–30 (citing Cisco, IPR2021-00329, Paper 13). As Immersion correctly notes, the Cisco case issued in July 2021, which is roughly one year before the Director Memo issued in June 2022. See id. at 29. The Director Memo clearly states that it is “binding agency guidance,” which, in essence, abrogates any prior inconsistent holdings by Board panels regarding the application of Fintiv, including the non-precedential holding in the Cisco case relied on by Immersion. Director Memo at 3. Put simply, because Meta has provided a Sotera stipulation, the Director Memo is controlling and the Fintiv factors are not a basis for denying institution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions for the claim term “free space” in the district court case, but Meta nonetheless contends that it “does not believe any term of the ’298 patent requires express construction at this time because . . . the claims are obvious under the constructions proposed by both parties in the pending litigation, or any other reasonable construction.” Pet. 6 (citing Ex. 1007, 2–3 (“Joint Claim Construction Statement” submitted by the parties in the district court case)). In its Preliminary Response, Immersion contends that “all claim terms should be afforded their ordinary and customary meaning, as [would have been] understood by a [person of ordinary skill in the art], in the context of the [’298] patent specification.” Prelim. Resp. 9 (citing Ex. 2002 ¶¶ 37, 38 (Declaration of Gregory Abowd, D.Phil.)). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4–5 (citing Ex. 1002 ¶¶ 12, 13). Relying on the testimony of Dr. Abowd, Immersion offers the same assessment of the level of ordinary skill in the art, except Immersion excludes industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body. Prelim. Resp. 8–9 (citing Ex. 2002 ¶ 11). The level of skill advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer science, or an equivalent degree. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise its arguments exclusively on its own industry experience. To the extent necessary, and for purposes of institution, we adopt Meta’s assessment of the level of ordinary skill in the art because Dr. Cooperstock’s identification of relevant industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body, is consistent with the ’298 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The dispute between the parties appears to center on how Nogami’s system assigns reference intensity levels to each of stimulation generation units 10–12 worn by user 1. Relying on the testimony of Dr. Cooperstock, Meta asserts “[i]t would have been obvious to implement Nogami to provide an identifier for each stimulation generation unit [10, 11, and 12] in order to allow CPU 201 to distinguish and associate it with the region of the body [of user 1] on which it is worn.” Pet. 33 (quoting Ex. 1002 ¶ 89). At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because it is consistent with Nogami’s disclosure that CPU 201 generates operation setting information (e.g., the reference intensity levels) for controlling the operation of stimulation generation units 10–12, which can vary based on whether these stimulation generation units are located in attention range 50. Ex. 1003 ¶¶ 120, 174, Fig. 4, step 406. Dr. Cooperstock further testifies that “[t]he concept of an ‘identifier’ for a peripheral is a basic concept in computer science or engineering” because [i]t was elementary knowledge of ordinary skilled artisans that virtually all objects on a computer capable of being operated on or manipulated by a computer – such as peripheral device, a computer file, and even a location within the computer’s memory – are associated with an identifier that allows the computer to identify the object and distinguish it from other objects in the computer. Ex. 1002 ¶ 90. At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because Nogami discloses an example of using an identifier in this way. That is, Nogami disclose using barcode 45 that “indicates ID [identification] information (e.g., an ID) unique to the stimulation generation unit 10.” Ex. 1003 ¶ 206, Fig. 11. Although Nogami discloses the example of barcode 45 only in relation to stimulation generation unit 10, it seems reasonable for a person of ordinary skill in the art to infer this teaching of barcode 45 equally applies to stimulation generation units 11 and 12 so that CPU 201 may also use barcode 45 as unique identifiers for these two stimulation generation units to distinguish them from stimulation generation unit 10. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Taking into account Nogami’s disclosure with respect to assigning different reference intensity levels depending on the region of the body of user 1 on which stimulation generation units 10–12 are worn, together with Nogami’s teaching or suggestion of using an identifier (e.g., barcode 45) that indicates ID information unique to each of stimulation generation units 10– 12, we are persuaded that the preliminary record supports that it would have” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,248,298 - Ashworth Bros., Inc. v. Laitram, L.L.C.All claims unpatentablePTAB · Nov 27, 2023 · IPR2020-00593 · APJ Eric C Jeschke · IPR · Remand
Claims 9–13 are unpatentable: claims 9–10 as obvious over Pupp and Roinestad, and claims 11–13 on grounds established in the original decision.
RulingsRemand decision- RemandOther
“Federal Circuit, which (1) affirmed in part, as to all issues raised by Patent Owner and (2) vacated and remanded in part, as to issues raised by Petitioner. See Laitram, LLC v. Ashworth Bros., Inc., Nos. 2022-1044, 2022-1045, 2022-1084, 2023 WL 3449148 (Fed. Cir. May 15, 2023) (the “Appeal Decision” or “Appeal Dec.”); see also Paper 68 (copy of the Appeal Decision). The Federal Circuit’s mandate issued on June 21, 2023. See Paper 67. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, on the complete record, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of claims 9–13 of the ’388 patent.” slip op. at 2
- Skill levelOther
“FWD 10 (quoting Pet. 12). Neither party addressed this issue on appeal. See generally Appeal Dec. We continue to apply the same level of ordinary skill in the art in this Final Written Decision on remand.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“B. Claim Construction In the original Final Written Decision, we construed “without slip” in element 9F as describing a system in which there is essentially no slip between the conveyor belt and the drive tower. FWD 11–15 (§ II.B). On appeal, the Federal Circuit agreed with that construction, rejecting Patent Owner’s arguments on the issue. See Appeal Dec. at *3–4. We continue to apply that same construction, to the extent relevant to the issues on remand.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“This position is supported by the cited testimony of Mr. O’Keefe who states that Roinestad “describes a spiral conveyor that combines a number of [tapered and non-tapered] segments so as to result in a drive tower with various patterns of tapered and non-tapered segments based on the design choice of” one of ordinary skill in the art. O’Keefe Pet. Decl. ¶ 86, cited at Pet. 30–31. According to Mr. O’Keefe, “[o]ne of the particular patterns of the segments chosen as an example of design choice in Roinestad is that in Figure 12 . . . which shows a tapered upper segment and non-tapered segment below the tapered segment in order to reduce the amount of stress exerted on the belt.” Id.13 Patent Owner does not dispute that Roinestad discloses the subject matter recited in claim 10. Instead, Patent Owner challenges Petitioner’s reliance on design choice (which we address below). See PO Resp. 59. In a sentence of Mr. Straight’s Declaration not mentioned by Patent Owner, Mr. Straight states that “[n]one of the cited references show a ridge from the top to the bottom with a constant lower portion below the taper . . . .” Straight Decl. ¶ 176, cited at PO Resp. 59. As an initial matter, this assertion is made by Mr. Straight, but not Patent Owner. See Consolidated Trial Practice Guide 35–36 (Nov. 2019), https://www.uspto.gov/Trial PracticeGuideConsolidated (citing Cisco Sys., Inc. v. C-Cation Techs., LLC, 13 Although Mr. O’Keefe discusses Figure 12 of Roinestad and Petitioner discusses Figure 11, we note that Figure 12 is a section view of one of the drums in Figure 11. See Ex. 1005, 5:6–7. IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (informative) (discussing 37 C.F.R. § 42.6(a)(3) and stating, “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”). Moreover, Mr. Straight’s position is not supported by the record, which, as discussed above, shows that Roinestad Figures 11 and 12 collectively disclose the subject matter of claim 10.” slip op. at 20
Patent outcomesUS 10,023,388 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,023,388 - Hebei Huatong Wires And Cables Group Co, Ltd. v. Gulf Coast Downhole Technologies LLCInstitution deniedPTAB · Nov 22, 2023 · IPR2023-00908 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find, upon review of the information in the Petition and evidence of record, that Petitioner fails to demonstrate a reasonable likelihood that Hurley discloses that its separation layer 52, even when formed of flexible armor (see Pet. 26) is structured to be hermetically sealed or maintain a positive or negative pressure as required by claim 1. Petitioner fails to direct us to sufficient evidence to support a finding that separation layer 52 is structured to be hermetically sealed or maintain a positive or negative pressure. Dr. Ballato does not provide any testimony in support.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc., (denying institution after determining that showing that the references are analogous art and could be combined does not necessarily establish a sufficient rationale for combining the references). The Petition does not provide any contentions directed to why a person having ordinary skill in the art would have been motivated to combine Bowker’s teachings with Hurley to arrive at the claimed invention. As such, the Petition fails to provide a reason, supported by rational underpinnings, to combine the teachings of Hurley and Bowker and, accordingly, fails to demonstrate obviousness. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Dr. Ballato’s Declaration adds nothing to Petitioner’s analysis. The Declaration merely repeats what is in the Petition and provides no support for the testimony. 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 Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). Accordingly, the Petition fails to provide information sufficient to demonstrate for institution that the combination of Hurley and Bowker renders claims 1–5, 11, 13, 18–20, and 22 unpatentable under 35 U.S.C. § 103(a) over Hurley and Bowker. Cf. Apple Inc. v. Corephotonics, Ltd., 81 F.4th 1353, 1360 (Fed. Cir. 2023) (“We held that, under the [Administrative” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc.,” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,581,565 - PTAB · Nov 13, 2023 · IPR2023-00796 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, 7–10, and 18–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner’s Preliminary Response asks the Board to exercise its discretion to deny institution under 35 U.S.C. § 314 in view of parallel litigation. Prelim. Resp. 1–10. However, “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Petitioner made such a stipulation. Pet. 71. Hence, we decline to exercise our discretion under § 314 to deny institution in view of parallel litigation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we determine it is unnecessary to construe any terms, but we encourage the parties to directly address issues of claim construction in future briefing. See 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))).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues a person of ordinary skill would have been motivated to incorporate the functionality of Fulton’s rotator in Williams’s digital array processor for several reasons. Pet. 40–44; see Pet. 36–38. Among other things, Petitioner contends Williams and Fulton describe similar devices and “a [person of ordinary skill in the art] would have had a reasonable expectation of success in making the proposed combination due to the similarities in their function and architecture.” Pet. 41. f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,260,141 - Apple Inc. v. Alivecor, Inc.All claims unpatentablePTAB · Oct 26, 2023 · IPR2022-01186 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1–14 are unpatentable as obvious, including under the Albert–Vyshedskiy–Platt and Batkin–Vyshedskiy grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals. Pet. 5; Ex. 1003 ¶ 15. Patent Owner “applies the level of skill provided in the petition.” PO Resp. 9; Ex. 2003 ¶ 25. The level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For this decision, we apply Petitioner’s stated level of ordinary skill in the art, which is consistent with the level of skill reflected in the ’042 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, we construe only those claim terms that require analysis to determine the patentability of the challenged claims. 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 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))); 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.’”). Petitioner asserts “no formal claim constructions are necessary in this proceeding.” Pet. 5–6. Patent Owner asserts “no claim term needs to be expressly construed to find that Petitioner has not met its burden in establishing the unpatentability of the claims by a preponderance of the evidence. EX2003, ¶¶26-27.” PO Resp. 9. We agree that no terms require claim construction.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Ph.D., in support of the asserted grounds. Ex. 1003. Patent Owner relies upon the declaration of Dr. Roozbeh Jafari, Ph.D. Ex. 2003. Based on the statements of qualifications and curricula vitae, we find Petitioner’s declarant Dr. Sarrafzadeh qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See 1 Because the patent was filed before March 16, 2003, pre-AIA § 103(a) is applicable. 2 Albert et al., US 5,735,285, issued Apr. 7, 1998. Ex. 1022. 3 Vyshedskiy et al., US 2004/0220488 A1, published Nov. 4, 2004. Ex. 1005. 4 Platt et al., US 6,485,416, issued Nov. 26, 2002. Ex. 1006. 5 Annavaram et al., Multimodal Sensing for Pediatric Obesity Applications, Proceedings of the International Workshop on Urban, Community, and Social Applications of Networked Sensing Systems (UrbanSense) 1–5 (Nov. 2008). Ex. 1007. 6 Batkin et al., US 2005/0239493 A1, published Oct. 27, 2005. Ex. 1008. 7 Sacco Boschetti, US 7,394,899 B2, issued July 1, 2008. Ex. 1021. curricula vitae, we find Patent Owner’s declarant Dr. Jafari qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See Ex. 2003 ¶¶ 1–9.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Patent Owner asserts that Petitioner’s reliance on avoidance of voice interference as a rationale is based on hindsight. See PO Resp. 17–19. Petitioner does not point to any specific disclosure in either Albert, Vyshedskiy, or Platt that suggests voice interference would have been an issue in the transmission of the ECG acoustic signals, instead relying on statements of Dr. Sarrafzadeh such as to choose a carrier frequency from about 6 kHz to about 20 kHz (e.g., 42 f3=7,500 Hz, f4=10,000 Hz, f5=12,500 Hz, f6=15,000 Hz, f7=17,500 Hz, f8=20,000 Hz) to avoid interference from human voice, which can reach the frequency of about 5 kHz. Ex. 1003 ¶ 53 (cited in Pet. 12). Dr. Jafari acknowledges in deposition testimony that “the interference was a known fact. But in the context of how this invention is expected to operate, was novel at the time in my opinion.” Ex. 1027, 65:23–65:1. We agree with Dr. Jafari and Patent Owner that simply because interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’042 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 29
Patent outcomesUS 9,649,042 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,649,042
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.