- Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01161 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Philipp and QT60161.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161. 4. Claims 2–20 Because Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’251 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision whether to institute an inter partes review “requires a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every” slip op. at 18
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implement these functions with a touch screen and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen’ pursuant to the touch screen teachings of QT60161.” Pet. 36.9 More specifically, Petitioner argues that it would have been obvious to apply the timed features of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to Petitioner, a person having ordinary skill in the art would have made such a combination because (1) “the primary timer-based functions described and claimed in the ’251 Patent are not only compatible with the touch screen described in QT60161, but are expressly discussed in QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61– 7:2; Ex. 1017, 7)), 9 The Petition emphasizes the names of prior art references. The emphasis is omitted throughout this Decision. (2) QT60161 and Philipp “are compatible with the same sensor technology” (id. at 31; see also id. at 31–32 (citing Ex. 1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex. 1028, Figs. 1b, 7)), (3) both the ’251 patent and QT60161 are directed to saving power after the passage of time (id. at 32–33 (citing Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97– 103)), and (4) implementing Philipp “with QT60161’s touch screen would have yielded predictable results” (id. at 33 (citing Ex. 1003 ¶¶ 97–103)). After reviewing Petitioner’s arguments and information, including the Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“In evaluating the effective filing date of the ’251 patent, we first address the parties’ respective burdens. In an inter partes review, Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also establishes that Petitioner has the initial burden of production to show a reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id. The Board then evaluates all of the evidence and determines whether Petitioner has satisfied its burden of persuasion regarding unpatentability. Id. We apply the same framework when considering whether the parties have met their respective burdens at this stage of the proceeding. (2) Application of Dynamic Drinkware Based on the current status of the proceedings, we are sufficiently persuaded that Petitioner satisfied its initial burden of production under Dynamic Drinkware. Specifically, Petitioner identifies two claim terms— “touch screen” and “key touch on a/the touch screen”—that are recited in each of the independent claims and were added to the ’274 application. Pet. 10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as discussed below, Petitioner has also sufficiently shown that the combination of Philipp and QT60161 teaches each of the limitations of the claims of the ’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner satisfied its initial burden of production by arguing that the prior art rendered the claims unpatentable). Because Petitioner satisfied its initial burden of production, the burden of production now shifts to Patent Owner to argue or produce evidence that either (1) the prior art does not render the claims unpatentable or (2) that Philipp is not prior art because the asserted claims of the ’251 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner—as is its right—chose not to file a Patent Owner’s Preliminary Response, for purposes of institution only, Patent Owner did not meet its burden of production to show that the ’251 patent is entitled to a filing date earlier than Philipp.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least 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 human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. 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))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - NXP USA, Inc. v. Impinj, Inc.Some claims unpatentablePTAB · Dec 13, 2021 · IPR2020-01063 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 3–6, 8, 19, and 20 are unpatentable under §103; claims 2, 7, and 9 were not shown unpatentable because the proposed combinations were inadequately supported.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Importantly, the Specification states that “[t]he [backscattered] combination is a code that is made from at least a portion of the first code, a portion of the second code, and in some embodiments include even more codes.” Id. at 14:34–37. Thus, the Specification makes clear that something labeled a “code” can consist of a plurality of data items also each labeled as a “code.” Mr. Fischer testifies, consistent with this, that “a code may comprise codes,” and explains, as an example, “an EPC code may comprise a company prefix code, an object class code, and a serial number code.” Ex. 1030 ¶ 2018; see Pet. Reply 1 (citing the same).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 13. Patent Owner does not propose a different definition. See PO Resp. 12 (“While Patent Owner does not necessarily agree with this definition, it will accept Petitioner’s definition for the purpose of this response.”). Patent Owner’s expert, Dr. Durgin, for purposes of his opinion testimony, adopts Mr. Fischer’s definition. Ex. 2001 ¶ 24. We determine that the definition offered by Mr. Fischer comports with the technical level of the ’431 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). We apply Mr. Fischer’s description of the person of ordinary skill in the art.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“We agree that the Graham factors must be considered in an obviousness analysis, but we do not agree that the law requires the rigid application of Graham v Deere for which Patent Owner impliedly advocates. We do consider all of the Graham factors in our analysis, which is what Graham v. Deere and KSR require. Further, Patent Owner’s contention, at its core, is that Petitioner’s arguments and evidence are not persuasive. See PO Resp. 29 (“In the instant case, Petitioner has failed to provide persuasive evidence or argument concerning what differences exist between Schuessler and the claimed invention, what modification of Schuessler Petitioner proposes, and why the proposed modification would have been obvious.” (emphasis added; Patent Owner’s italicizing omitted)). We acknowledge that the Petition does, as Patent Owner notes (PO Resp. 29–30), assert that both Schuessler and Gen2 disclose or teach certain limitations. However, Petitioner’s articulated challenges explicitly or impliedly address the underlying factual matters identified in Graham adequately and clearly enough for an analysis of those challenges to be conducted and for Patent Owner to respond, as it has.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner’s arguments are unavailing. The applicant’s disclosure of Bailey to the examiner does not negate the applicability of its teachings in this proceeding. We find the Petitioner’s recitation of the benefits of encryption to constitute an adequate and persuasive reason why a person of ordinary skill in the art would be motivated to combine Bailey with Schuessler and Gen2. Bailey identified a problem to be solved by its teachings—“EPC tags are vulnerable to counterfeiting or other types of cloning attacks.” Ex. 1023 ¶ 7. Mr. Fischer credibly and persuasively testifies regarding “the well-known problems associated with skimming and cloned tags” and that persons of ordinary skill in the art “viewed ‘[m]itigating the risk of tag cloning [as] an essential security goal in an RFID system.’” Ex. 1003 ¶¶ 246–249 (quoting Ex. 1024, 4). In contrast, Dr. Durgin applies an inappropriately rigid and narrow analysis, unpersuasively opining, for example, that there is nothing about Schuessler’s payload-length problem “that would lead a person of ordinary skill in the art to look to Bailey to fix deficiencies in Schuessler.” Ex. 2001 ¶ 106.” slip op. at 39
Patent outcomesUS 8,390,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,390,431 - PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - 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 - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - Google LLC v. Traxcell Technologies, LLCInstitution deniedPTAB · Dec 7, 2021 · IPR2021-01004 · APJ Norman H Beamer · IPR · Institution
The Board denied institution on claims 1–30 because Google did not show a reasonable likelihood of prevailing on any challenged obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not shown a reasonable likelihood of prevailing on any challenged claim. Accordingly, we do not institute an inter partes review of any claim of the ’196 patent. The Petition is denied.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Nonetheless, we are not persuaded that Petitioner has sufficiently articulated reasoning with rational underpinnings for the proffered combination, as required by KSR. Contrary to Petitioner’s assertion, it is not the case that “the identification technique disclosed in Hancock necessarily includes a determination of whether the device type is fixed or mobile.” Pet. 15. Rather, each separate embodiment of a portable computing device used in the Hancock system has an automatic location identification (ALI) device that is specifically designed for that device. Ex. 1005, 23:51–24:4 (describing “ALI Example I” and “ALI Example II” for cellular devices, and an additional example for land-line telephone devices). There is no suggestion of providing, for any of Hancock’s devices or server, the capability to determine whether the device is fixed or mobile, and Hancock suggests no reason to have that capability. Each device has its own ALI that is specifically designed for that device. Because we find insufficient factual support for Petitioner’s basic premise, that “the identification technique disclosed in Hancock necessarily includes a determination of whether the device type is fixed or mobile,” the rationale for the combination fails scrutiny. Even though Karp discloses a step in which a server determines whether a communicating device is a cell device, there is no persuasive reason in the present record why one of ordinary skill would have considered that pertinent to Hancock.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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, “[n]o claims need be expressly construed.” Pet. 2. Patent Owner does not propose any constructions of the claims for purposes here. Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Cisco Systems, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Dec 6, 2021 · IPR2021-00961 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Cisco did not show a reasonable likelihood that any challenged claim was unpatentable over Traversat alone or Traversat and Guo.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “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). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’014 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claims 1, 18, and 19 recite “wherein the connected services layer is configured to support establishment of the service connection based on a service name of the connected services layer, a service name of the remote connected services layer, and a service connection identifier for the service connection.” Ex. 1001, 14:37–42, 16:38–43, 16:65–17:3 (emphasis added). Claims 1, 18, and 19 also recite “wherein the connected services layer is configured to: send, toward a server, a service connection request message comprising the service name of the connected services layer and the service name of the remote connected services layer of the remote endpoint.” Id. at 14:42–47, 16:43–48, 17:3–8 (emphasis added). Because the former limitation refers to “a service name” and the latter limitation refers to “the service name,” those limitations together require a service connection request message that includes the same “service name of the remote connected services layer” that is used to establish the service connection. Id. at 14:37–47, 16:38–48, 16:65–17:8 (emphasis added); see Tech. Consumer Prods., Inc. v. Lighting Sci. Grp. Corp., 955 F.3d 16, 22 (Fed. Cir. 2020) (“No other heat sink is specified in the claim. Consequently, ‘the heat sink’ that is used in the calculation of the height-to-diameter ratio is the same heat sink that is annularly coupled to the heat spreader.”).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree that Petitioner does not show sufficiently that Traversat’s discovery query message includes the service name of the remote connected services layer, but for a different reason than the one articulated by Patent Owner. As discussed above, claim 1 requires a service connection request message that includes the same “service name of the remote connected services layer” that is used to establish the service connection. See Section II.B. On this record, Petitioner does not show sufficiently that Traversat’s discovery query message includes the same service name of the remote connected services layer that is used to establish the service connection.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 9,357,014 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01099 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on claims 1–22 under § 325(d), finding substantially the same arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7
Discretionary denialPatents in suitUS 9,529,769 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01103 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 14–38 under § 325(d), finding substantially the same arguments had been presented before and Intel had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred in determining that the ’882 application (issued as Chu ’330) incorporated Chu ’886 by reference or in entering the amendment that added the subject matter from Chu ’886 in the ’138 application. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- BurdenDecided for patent owner
“In short, under Part II of the Advanced Bionics framework, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference Chu ’886. Advanced Bionics, Paper 6 at 8.” slip op. at 14
Discretionary denial
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.