- Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01362 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds after finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the 5 Holloway et al., WO 02/49322 A2, filed Dec. 11, 2001, published June 20, 2002. Ex. 1006. 6 Pitroda, US 7,308,426 B1, filed Aug. 11,1999, issued Dec. 11, 2007. Ex. 1007. cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (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. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA) [W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the 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) (2023). Under this standard, claim terms have 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. Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states that “[n]o formal claim constructions are required in this proceeding.” Pet. 6. However, Petitioner submits “preliminary” claim constructions proposed by the parties in the District Court case, including proposed constructions for the claim terms “transceiver” and “transmitter.” Pet. 7–9. Patent Owner states that it “does not dispute the Petition’s statement on claim construction for the purposes of this Preliminary Response.” Prelim. Resp. 8. Notwithstanding the parties’ statements disavowing the need for claim construction, in our analysis set forth below we consider construction issues regarding the independent claim terms “voice call communication,” “voice call signal,” “transceiver,” and “transmitter.” We invite the parties to further consider these issues going forward.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,381,974 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,405,947 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01364 · APJ Norman H Beamer · IPR · Institution
The Board instituted inter partes review of claims 1–39 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (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. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Petitioner argues that this combination would have been motivated by the fact that the Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 12–14 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 15–16 (citing Ex. 1004 ¶¶ 8, 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not address the issue of motivation to combine Willgert and Mooney. See generally Prelim. Resp. We find, based on the current record, that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Willgert and Mooney.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“Willgert/Mooney combination does not teach or suggest the voice call signal requirements of the claims. As stated in the ’984 patent, the voice call signals relate to “the primary function of [the mobile communications device], i.e. to facilitate a user in communicating with another user of another communication device.” Ex. 1001, 3:47–49. The proffered combination of wirelessly connecting a Bluetooth headset to the Bluetooth receiver/transmitter of Willgert’s communications unit includes the fact that the Willgert communications unit is integrated into a mobile telephone. Ex. 1004 ¶¶ 30, 32. Thus, when the telephone is being used for its “primary purpose” of communicating with another user, the same voice call signal involved in that communication is also being transmitted from the telephone to the Bluetooth headset. We see no reason why the claimed “voice call signals” must be construed to exclude such signals. Patent Owner declined to address claim construction in its Preliminary Response, but is free to explore this issue post-institution. We also disagree, based on the current record, with Patent Owner’s assertion that Willgert’s RFID transponder 2 does not transmit “RFID transponder data” or “RFID transponder signals.” The very term itself — RFID transponder — as well as the explicit disclosures in Willgert, establish that the RFID transponder transmits RFID signals and data. Ex. 1004 ¶¶ 4, 14–19. Although, as Patent Owner points out, the ’984 patent discloses embodiments that “emulate” an RFID transponder, there is no reason to confine the scope of the claims to the disclosed embodiments and there is nothing in the ’984 specification or claims that disavows including Willgert’s RFID transponder within the scope of the claims. Also, Patent Owner’s reliance on the prosecution history regarding the Zalewski patent is misplaced. As Patent Owner has explained, Zalewski disclosed “‘an RFID transponder 110’ embedded in a removable cover for a phone or other device ‘such as an MP3 player.’” Prelim. Resp. 14 (citing Ex. 2001, 7:63–8:3). Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirements of a transceiver or transmitter switching between a voice call state and an RFID transponder state were not met. Ex. 1002, 18, 91, 134–135, 155; Ex. 1009, 530. Zalewski was not distinguished based on whether or not the RFID transponder was emulated. Again, Patent Owner is free to explore the scope of the claim terms “transceiver” and “transmitter” post-institution.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,127,984 - PTAB · Mar 5, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claim 15 based on Gallagher and Lumia, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation.” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’255 patent in the Texas Litigation. Prelim. Sur-reply 4. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 15 would have been obvious in view of the combination of Gallagher and Lumia.” slip op. at 31
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 12–14 and 17–23. Prelim. Resp. 1; Ex. 2002. Based on our review of Exhibit 2002, we determine that a disclaimer of claims 12–14 and 17–23 of the ’255 patent under 35 U.S.C. § 253(a) has been filed with the Office as of December 9, 2024. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 12–14 and 17–23 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 12–14 and 17–23. As a result, the remaining challenged claim is claim 15 (“the challenged claim”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,335,255 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). 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.” For the reasons explained below, we institute an inter partes review of the ’730 patent.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. 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 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,352,730 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00233 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 based on a reasonable likelihood of prevailing on obviousness grounds over Ludtke or Ludtke and Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for patent owner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority,” or “third party that operates a trusted authority,” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’954 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:5–17, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’954 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:37–51, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:30–33) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 7:27–59, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, are presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third party that operates a trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third party that operates a trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. 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 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 63–67 (citing Ex. 1006 ¶¶ 194, 234, 241, 265–266, Figs. 5, 9; Ex. 1003 ¶¶ 184–185). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 68 (citing Ex. 1003 ¶¶ 186–187). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claims 10 and 13. Pet. 69 (citing Ex. 1003 ¶ 188). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,886,954 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 23, 2024 · IPR2024-00234 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 based on the asserted obviousness grounds over Ludtke and Ludtke with Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for petitioner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:8–20, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, the parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’905 Patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:39–53, Figs. 3–4. However, despite trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:33–36) refers to an agent’s relationship to the principal parties to the transaction, not to level of activity the agent engages in. See id. at 7:30–642, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, is presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (“The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third-party trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third-party trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. 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
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4–5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. See Prelim. Resp. Based on the record presented, including our review of the ’905 Patent and the types of problems and solutions described in the ’905 Patent and cited prior art, we adopt Petitioner’s definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 43–46 (citing Ex. 1006 ¶¶ 194, 234, 241, 264–265, Figs. 5, 9; Ex. 1003 ¶¶ 66–70). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 50 (citing Ex. 1003 ¶¶ 152–153). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claim 11. Id. at 51 (citing Ex. 1003 ¶ 155). Patent Owner does not yet provide separate arguments for claims 2 and 11. See Prelim. Resp. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 2 and 11, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,298,905 - PTAB · Jan 10, 2024 · IPR2023-01195 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6–14, 16–18, 20–29, 35, 37–39, and 42–45 on all petition grounds and granted Amazon’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director of the USPTO, 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 ’789 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record. We also grant Amazon’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 13
Discretionary denialPatents in suitUS 10,839,789 - PTAB · Nov 6, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the challenged claims are obvious over the specified combinations of prior art.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Institution Decision and directed us to revisit our analysis regarding Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Paper 14 (“Remand Decision,” “Remand Dec.”), 4–8. The Director agreed that our determination that the first part of the Advanced Bionics framework was met (id. at 5 (citing Orig. Inst. Dec. 9– 10)), but with respect to the second part of the Advanced Bionics framework, the Director stated: I find that Petitioner’s arguments and cited evidence establish that the Office erred in a manner material to patentability under the particular circumstances of this case. Specifically, Petitioner’s arguments and cited evidence establish there is substantial overlap in the subject matter described in the ’009 patent and the ’148 patent[1] (subject to the ʼ148 FWD)[2], generally, and the claimed subject matter recited by the challenged claims of the ’009 patent and of the ’148 patent, specifically. Remand Dec. 6 (citing Pet. 15–68; Ex. 1010; Ex. 2001). The Director further found that “the Office erred by overlooking the significance of the ’148 FWD as it pertains to the patentability of the claims of the ’009 patent.” Id. at 7. Lastly, the Director determined that, “under the specific circumstances of this proceeding, I find the second part of the Advanced Bionics framework is satisfied,” such that “the facts here do not warrant exercising discretion to deny institution under 35 U.S.C. §325(d).” Id. at 8. As such, given that the only discretionary issues argued by the parties were directed to denial under 35 U.S.C. §325(d) (see Pet.; Prelim. Resp.), we proceed to consider the merits of the grounds of unpatentability raised in the Petition. Further, as set forth below, we determine that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Thus, we institute an inter partes review in this proceeding.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’009 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–30 of the ’009 Patent on the following asserted grounds: Claims 1–5, 8–24, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, and Hayter; and Claims 6, 7, and 25 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, Hayter, and Esbensen;” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber- 3 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 4 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 5 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 6 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 7 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). attacks.” Pet. 5 (citing Ex. 1003 ¶¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 7
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). With respect to the language of the instant challenged claims, we agree with Patent Owner on the issues of collateral estoppel. As Patent Owner points out, the prior determinations were made with respect to a different claim construction standard. Additionally, although the claims of the ’148 Patent and ’009 Patent are similar in scope, the recitations are not identical. Therefore, we evaluate the arguments and evidence presented in the Petition to determine whether Petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over previously presented art. Nonetheless, where appropriate, we consider the Petition’s citations to the ’148 FWD, which is part of the evidence of record in this proceeding. More particularly, we agree with Petitioner that certain issues were decided by the ’148 FWD, having been resolved against Patent Owner and affirmed by the Federal Circuit, and are binding in this proceeding. Pet. 11. Given that the ’009 Patent is a continuation of the ’148 Patent, sharing an identical Specification, we agree that Roese, Golnabi, Huima, Hayter, and Esbensen are acknowledged as prior art, that there would have been motivation to combine the references, and that combinations of those references demonstrate the obviousness of all claims of the ’148 Patent. See Id. at 11–12. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,681,009 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Sep 7, 2023 · IPR2023-00581 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 2–6, 11, 14, and 16 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, Patent Owner argues that Angelot previously was presented to the Office during prosecution of U.S. Application No. 14/938,056 (“the ’056 application”), which is “a child of the ’772 [p]atent.” Prelim. Resp. 24, 64–65. Specifically, Patent Owner contends that the Examiner of the ’056 application issued a rejection based on Angelot, and Patent Owner “overcame that rejection.” Id. at 64–65. However, “[u]nder § 325(d), the art and arguments must have been previously presented to the Office during proceedings pertaining to the challenged patent.” Advanced Bionics, Paper 6 at 7 (emphasis added). Here, Patent Owner at most presents evidence that Angelot previously was presented to the Office during proceedings pertaining to an application that claims priority to the ’772 patent. Prelim. Resp. 63–65. Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. See id. Second, Patent Owner argues that Petitioner’s evidence that relaying was known in the art is “cumulative of art cited by [Patent Owner] and considered by the Examiner during prosecution of the ’772 [p]atent.” Prelim. Resp. 52–54. For each asserted ground, Petitioner relies on Angelot for most of the claim limitations and relies on the allegedly cumulative art only to show that relaying was known in the art. Pet. 20–72. But, as discussed above, Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. Thus, on this record, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office. As a result, the first part of the Advanced Bionics framework is not satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a B.S. in Electrical Engineering or a related field with at least five years of experience in designing communication systems.” Pet. 16 (citing Ex. 1002 ¶¶ 34–39). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Daniel Blumenthal. Ex. 1002 ¶¶ 34–39. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 25. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,886,772
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.