- Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00940 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 15–21 and 26, exercising § 314(a) discretion because all seven General Plastic factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with UTL that Micron’s explanation for the delay between the two petitions is inadequate. Because Micron does not assert the Frank Shu presentations (Exs. 1022, 1024) as prior art, the timing of their discovery is not relevant to the delay in asserting Shu, the Trim Proposals, Ban, and Jenett in the present Petition. We also agree with UTL that Micron should have known UTL’s position on the priority date of the ’406 patent when UTL served its Initial Infringement Contentions on August 21, 2020, well before Micron filed its first petition. See Ex. 2005, 5 (contending that “claims [15–21 and 26–30] of the ’406 Patent are entitled to a priority date no later than December 6, 2006.”). Thus, any delay in UTL’s interrogatory responses in April 2021 does not adequately explain Micron’s delay in filing the current Petition.” slip op. at 11
Discretionary denialPatents in suitUS 8,533,406 - Micron Technology, Inc., Micron Semiconductor Products, Inc., And Micron Technology Texas LLC v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00941 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 1–5 and 8–12, finding all seven General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 7
Discretionary denialPatents in suitUS 8,762,658 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00942 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–6 and 12–16, exercising its discretion under General Plastic because all seven factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“of institution under § 314(a) when a party files a “follow-on” petition challenging the same patent as a previous petition. See General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i). These factors are as follows: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 7
Discretionary denialPatents in suitUS 9,632,727 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentablePTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision
Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.
RulingsFinal written decision- BurdenDecided for patent owner
“do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47
- Expert testimonyPetitioner expert creditedOther
“parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14
Patent outcomesUS 6,157,721 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,721 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution deniedPTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted Dua-based combinations rendered any claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under that 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, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11–12 (citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,118,218 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution deniedPTAB · Dec 14, 2021 · IPR2021-00978 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted combinations teach or suggest the server-initiated fund transfer limitation in claims 1 and 9.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2
- BurdenDenied
“Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25
- PTAB / AIA Trials › Discretionary denialNot reached
“V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 17–25.” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,448,855 - PTAB · Dec 13, 2021 · IPR2021-01128 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, and 14–19 on all petitioned grounds, after finding a reasonable likelihood of success on the § 103 grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the same articulation of the level of ordinary skill in the art that the Administrative Law Judge adopted in the related ITC proceeding, which is as follows: one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl. ¶ 30. This articulation of the level of ordinary skill is consistent with the problems and solutions in the ’173 patent and the prior art of record. Therefore, we adopt the proposed articulation of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Although a number of ’173 patent claim terms have been construed in the related ITC proceeding, Petitioner contends that we do not need to explicitly construe any claim terms. Pet. 6–7. In particular, the constructions for the selected terms in the related ITC proceeding are as follows, according to Petitioner. Term Construction a sensing element that com-a physical electrical sensing element prises a sensing path that com-made of conductive substances that prises a length comprises a path for sensing that is determined for each use that com-prises a length object either an inanimate object, such as a wiper, pointer, or stylus, or alterna-tively, a human finger or other ap-pendage any of whose presence ad-jacent the element will create a lo-calized capacitive coupling from a region of the element back to a cir-cuit reference via any circuitous path, whether galvanically or nongalvanically displacement distance and direction of movement Pet. 6−7. Petitioner does not dispute these constructions (id.), which we find reasonable at this juncture. Therefore, we preliminarily adopt these constructions for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At our discretion, 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) (2018). Applying that standard, we institute an inter partes review of all asserted grounds and all challenged claims of the ’173 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record, including any timely response by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Further, to the extent the range of parameter values is not expressly or inherently taught by Trent, Petitioner argues that it would have been obvious to set a parameter to an initial value within a range that is associated with the length of the sensing path. Id. Relying on testimony of Dr. Bederson, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the volume control knob of Trent’s Figure 36 (reproduced above in our overview of Trent) with functionality that sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005 ¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent identifies, as part of the prior art “solutions” to the problem of the invention, a two-dimensional sensor in which users can slide their fingers to generate scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a person of ordinary skill in the art would have understood that such a sensor would set a parameter to an initial value as recited in the claims. See Bederson Decl. ¶ 93. We find Petitioner’s arguments, and Dr. Bederson’s supporting testimony on the above points, sufficiently persuasive at this preliminary stage to show by a reasonable likelihood that Trent discloses or teaches the Setting Parameter Limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,432,173 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - PTAB · Dec 6, 2021 · IPR2021-00923 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(a) Success in Modifying Petitioner argues that “a [person of ordinary skill in the art] would have anticipated success in modifying Mann’s wristwatch based on similarities in functionality and structure of the computer, cameras, and control functionality taught by Mann and Numazaki.” Pet. 20–21. In support of this argument, Petitioner cites to the Bederson Declaration testimony modification would have been well within the skill set of a [person of ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46). Petitioner also cites to legal precedent for the proposition that it is “obvious to use known techniques to improve similar devices in the same way.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Petitioner further explains that Mann includes “the requisite structure to capture gestures (i.e., PDA and wristwatch devices with cameras facing that user), and it expressly describes receiving finger-based input to control the operation of the wristwatch,” while “Numazaki similarly describes PDA and wristwatch devices with cameras facing the user such that a user can perform gestures over the devices to exert control over the operation of the device. Id. (citing Ex. 1004, 11–13, 15; Ex. 1005, 52:5–32). Petitioner concludes that “[a] [person of ordinary skill in the art] would have recognized that [the] modif[ication] . . . would have required a straightforward replacement of Mann’s native user-facing imaging with Numazaki’s gesture-recognition hardware” and “a straightforward software update (i.e., adding Numazaki’s gesture detection routines).” Id. at 21–22 (citing Ex. 1003 ¶ 46).” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly notes that “[t]he Petition [and the declarant] fail[] to provide any explanation or reasoning as to why Numazaki’s no-touch gestures would draw ‘much less’ attention than physically interacting with a watch interface or using a stylus on a PDA.” Prelim. Resp. 9–10. We further note that though the Bederson Declaration testimony makes statements similar to those in the Petition, no support is provided for what appear to be conclusory statements. See Ex. 1003 ¶ 47. Further, the declarant does not identify any experience or expertise in things of a “covert nature.” See id. at App. A (declarant’s resume). Thus, we give the Bederson Declaration testimony little weight on this point. Patent Owner further argues that physical contact with a wristwatch or PDA was the normal way in which one would have expected someone to interact with such a device at the time of the invention. Prelim. Resp. 9. Patent Owner further argues that “no-touch gesture recognition . . . [is] more likely to intrigue the subject and draw their attention.” Id. at 9–10. On this record, Patent Owner’s arguments appear to have merits. Nevertheless, we do not need to determine whether this additional reason to combine by Petitioner is sufficient in light of our determination regarding the first reason to combine.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 6
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,194,924 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentablePTAB · Dec 3, 2021 · IPR2020-00664 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1 and 4–8 are unpatentable as obvious over Gammie; claims 1 and 8 are also obvious over Shamoon, which does not render claims 4–7 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals do not differ in any meaningful way with respect to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’627 patent. We” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Petitioner argues that, “even if the preamble is limiting, it has been met by the art.” Pet. Reply 3. Petitioner argues that the preamble language recites only a generic processor and type of storage medium, both of which would be evident from the body’s recitation of steps performed by an executing application. Thus, according to Petitioner, the preamble adds nothing essential to the claim that the claim body does not already require. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need not decide whether the preamble limits claim 1 because Petitioner establishes by a preponderance of the evidence that Gammie and Shamoon each respectively teach the preamble of claim 1, as we explain in the sections further below. See §§ II.C.2.a, II.D.2.a.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“2. “secure control application” Petitioner asserts the term “secure control application” recited in claim 1 should be construed to mean “an application that manages access to protected content.” Pet. 14–16 (citing Ex. 1002 ¶¶ 88–90). To support this proposed construction, Petitioner states that the ’627 patent describes the “secure control application” as “‘a first application’” that “‘act[s] as a supervisory digital rights managements system that controls a second application.’” Id. at 15 (quoting Ex. 1001, 2:46–49, 4:23–33); see also id. at 15–16 (citing Ex. 1001, 4:45–48, 4:49–5:1, 5:23–44, 6:25–31). Patent Owner applies Petitioner’s proposed construction in its Response and contends that construction of this term is not necessary to resolve the parties’ controversy. PO Resp. 24. Based on the arguments presented by the parties, and the fact that Patent Owner does not dispute the construction, we adopt Petitioner’s proposed construction for “secure control application.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“be given its plain and ordinary meaning. The term “governed application” is recited in independent claim 1. Dependent claim 4 adds that the governed application “satisfies one or more requirements.” Ex. 1001, 12:43–47. Patent Owner argues that the governed application of claim 1 be subject to certain rules or policies, but fails to explain how these rules and policies differ from the “one or more requirements” of claim 4. See Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.”). Furthermore, Patent Owner’s proposed construction requires the governed application to be subject to certain rules or policies imposed by the “security module.” The term “security module” appears nowhere in the ʼ627 patent or claims, and its inclusion in the construction of the term would create confusion regarding whether claim 1 includes the additional limitation of a security module separate from its other limitations. Patent Owner’s proposed construction would, therefore, add ambiguity rather than providing clarity to the claim beyond the plain meaning of the term itself.” slip op. at 13
Patent outcomesUS 9,569,627 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,569,627
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.