- PTAB · Dec 14, 2022 · IPR2022-01108 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 1–19, finding a reasonable likelihood that Matsing would show them unpatentable as obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–19 of the ’947 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Even if Patent Owner is correct that Demetriadou is cumulative of Mateo-Segura and assuming that the Office considered the latter because it is listed on an IDS, Petitioner shows the Office erred in a manner material to the patentability of the challenged claims. Petitioner shows that, during prosecution, “the Applicant amended claim 1 to include 1) ‘a plurality of non-spherical lenses,’ and 2) ‘a selector connected to each of said plurality of feed elements of said plurality of lens sets.’” Pet. 11 (citing Ex. 1010, 2). As Petitioner argues, “[c]ritically, the examiner failed to consider whether these limitations would have been obvious over Matitsine-860 in view of other material prior art available to a person of ordinary skill in the art.” Id. Regarding the “non-spherical lenses” limitation of claim 1, as discussed above, Petitioner shows that Matitsine-860 discloses non-spherical lenses, and Patent Owner does not dispute this showing on this preliminary record. See Pet. 18 (citing Ex. 1002, 4:55–85); Prelim. Resp. 18–23. In addition, Petitioner shows that Demetriadou teaches a “slim lens” or “‘discus’ shaped lens,” produced “by ‘squeezing’ or ‘slimming’ [a] spherical lens.” Id. (quoting Ex. 1003, Abstract, 19927). Petitioner also provides reasons supported by factual underpinnings to combine Demetriadou’s teachings with those of Matitsine-860, as discussed above. See Advanced Bionics, Paper 6 at 9–11 & n.10 (reasoning that Becton Dickinson factor (f), “additional evidence and facts presented in the petition,” and Becton Dickinson factor (e), the extent the Petition shows error, inform the material error inquiry). Therefore, even if Demetriadou is cumulative of Mateo- Segura, Petitioner shows that the Office overlooked or misapprehended any alleged cumulative teachings as represented by the non-spherical lenses as described in Matitsine-860 and Demetriadou, thereby satisfying the second part of the two-part framework of Advanced Bionics. With respect to the “selector” limitation of claim 1, even if Patent Owner is correct that Collier “discloses switching or throwing different switches 34 to shape a pattern,” this, without more, does not show that Ebling is cumulative to Collier. See Prelim. Resp. 14 (citing Ex. 2004, 7:35–42). Although Patent Owner’s characterization of Collier appears correct as indicated above (supra note 9), Ebling teaches a switch to select from multiple feeds arranged around each lens to form a radiation pattern, a feature that the applicant argued is a patentable feature over Matitsine during prosecution. See Ex. 1010, 5 (arguing that “Matitsine does not teach a selector in communication with the plurality of feed elements of each lens, as required by amended claim 1” (emphasis added)); Pet. 14, 22; Ex. 1004, code (57), 6:27–33, Fig. 1. Therefore, Ebling is not cumulative of Collier under the first part of the two-part framework of Advanced Bionics. For the foregoing reasons, we decline to exercise our discretion under” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“II. OBVIOUSNESS ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts the following: A person of ordinary skill in the art (“POSITA”) is a hypothetical person who is presumed to be aware of all relevant prior art. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). At the time that the patent application for the ‘947 Patent was filed, a POSITA would have had an understanding of basic antenna theory as it applies specifically to wireless communication antennas, and to further have a basic understanding of the wide variations of antenna types that have been developed over the past 50 years. Pet. 16. Patent Owner adopts “Petitioner’s proposed definition” “[f]or purposes of th[e] Preliminary Response.” Prelim. Resp. 6. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’947 patent and the asserted prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, Patent Owner’s arguments do not undermine Petitioner’s showing. The arguments are not commensurate in scope with the claims, because the claims do not require “improved angular ranges.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). In addition, Patent Owner does not explain how its disclosed or claimed “nonspherical lenses” have different properties than the Demetriadou’s nonspherical lenses. Also, Patent Owner generally appears to conflate directivity with a wider steering angle. See Prelim. Resp. 19–20. For example, Patent Owner relies on Figures 5 and 6 of Demetriadou, but those figures merely demonstrate the high directivity of the disclosed antennas with “slim Lunenberg” lenses. See Ex. 1003, Figs. 5, 6. Demetriadou states that the most significant advantage of the slim Luneburg lens as discussed above is its steering properties. The steerable behaviour of the slim lens was examined by moving the patch antenna along the y-axis by a distance c (defined in Fig. 3(a)). It was found that the lens steered the main lobe, while it maintained high values for the directivity and low side-lobes. Ex. 1003, 19932. In other words, the steerable high directivity of Demetriadou is an advantage, not a problem, contrary to Patent Owner’s arguments. Matitsine-860 confirms that a narrow beam is advantageous, because it essentially provides more gain in a given direction: “The spherical lens allows the output RF signal to narrow so that the resultant beam can travel a farther distance.” Ex. 1002, 5:34–35. Matitsine-860 also confirms that its system “uses an array of spherical” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,553,947 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision
The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42
Patent outcomesUS 7,292,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Nov 15, 2022 · IPR2022-00976 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–3 under § 103 over the asserted combinations, finding a reasonable likelihood Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“joint motion to amend the scheduling order that proposes a trial date of November 30, 2023, no trial date has been set in the Texas Action. Ex. 2007 (Joint Motion to Enter Agreed Scheduling Order), 8. The fact that no trial date has been set weighs against exercising our discretion to deny institution. See Oticon Med. AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at 23–24 (PTAB Oct. 16, 2019) (Decision on Institution) (designated precedential as to §§ II.B and II.C) (lack of trial date weighs against exercising discretion to deny institution, even when discovery is “well underway”). Putting aside that no trial date has been set in the Texas Action, the Guidance Memo states that “[a] court’s scheduled trial date . . . is not by itself a good indicator of whether the district court trial will occur before the statutory deadline for a final written decision,” and directs us to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides.” Guidance Memo 8–9, 9 n.12 (“[t]he most recent statistics” on median time-to-trial for civil actions in district court are available at: https://www.uscourts.gov/statistics/table/ na/federal-court-management-statistics/2022/03/31-1). Both parties introduced evidence that the median time-to-trial for civil actions in the U.S. District Court for the Western District of Texas is somewhere between 27.2 months and 28.3 months. Prelim. Resp. 50 (citing Ex. 2006); Prelim. Reply 3 (citing Ex. 1016, 37). Because the complaint in the Texas Action was filed on March 17, 2022, the projected trial date for this proceeding using the median time-to-trial statistics for civil actions in the Western District of Texas would be somewhere between late June 2024 and early July 2024. Applying the principles articulated in the Guidance Memo, Factor 2 weighs against exercising our discretion to deny institution because the projected statutory deadline for issuing a final written decision in this proceeding will fall in November 2023.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Becton, Dickinson, 17–18. Factors (a), (b), and (d) provide guidance as to whether the art or arguments presented in the petition are the same or substantially the same as those previously presented to the Office, whereas factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of such art or arguments. Advanced Bionics, Paper 6 at 10. “At bottom, this [two-part] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. When discussing the prosecution history of the ’386 patent, Fintiv states that “[t]he Examiner considered 541 separate references,” one of which was Dill, but the Examiner “did not issue a single prior art rejection.” Prelim. Resp. 7. Instead, the Examiner only issued two rejections based on 35 U.S.C. § 101—an issue foreclosed in an IPR. See id.; see also Pet. 4 (“The Examiner issued two Office Actions, rejecting the claims only on the basis of 35 U.S.C. § 101.” (citing Ex. 1002, 1606–12, 1366–71)). That is, the overlap between the art considered but not applied by the Examiner during prosecution of the ’386 patent and the art presented by Apple in the Petition is minimal because, although Dill may have been considered by the Examiner during prosecution, it is undisputed that the other four references that serve as the basis of the two obviousness grounds raised in the Petition (i.e., Vadhri, Akashika, Hansen, and Liao) were not before the Examiner during prosecution. Advanced Bionics indicates that satisfying the first part of the framework is a prerequisite to reaching the second part of the framework. See Advanced Bionics, Paper 6 at 8, 10. As we explain above, we are not persuaded that the first part of the Advanced Bionics framework has been met. As a result, we need not reach whether Fintiv has met the second part of the Advanced Bionics framework. Accordingly, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any response thereto 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). Taking into account Fintiv’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Apple would prevail in challenging at least one of claims 1–3 of the ’386 patent as unpatentable. Pursuant to § 314, we hereby institute an IPR as to these claims of the ’386 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Apple contends that “no claim term requires construction beyond its ordinary and customary meaning.” Pet. 5. Relying on the testimony of Dr. Houh, Apple asserts that “[a person of ordinary skill in the art] would apply the ordinary and customary meaning to all [claim] terms in [independent claims 1–3].” Id. (citing Ex. 1003 ¶ 43). In the Preliminary Response, Fintiv does not address claim construction. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,892,386 - Alarm.Com, Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00728 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“After considering the Petition and associated evidence, we exercise” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision and to the extent necessary, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose constructions for any claim terms. See Pet. 6 (citing 37 C.F.R. § 42.100(b)). On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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
Claim constructionDiscretionary denialPatents in suitUS 9,349,262 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00757 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution on claims 1–24 under § 325(d), finding the asserted art substantially the same as art considered during prosecution and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Examiner during prosecution. As noted above, the Petition relies primarily on Nollet, in view of the knowledge of one of ordinary skill in the art, for teaching each limitation in the independent challenged claims. See Pet. 38–60, 67–72. Although the Petition cites additional teachings in Tuan, Miller, and Redaelli for certain limitations (see id.), Petitioner has not specifically identified any limitations for which the cited disclosure in Tuan, Miller, or Redaelli is not cumulative to that in Nollet. Rather, Petitioner asserts, for example, that “Nollet and Tuan are directed to similar systems that assign reconfigurable tiles of a hardware device to tasks of an application” (id. at 32), and that “Nollet and Miller are both directed to efficient resource sharing among applications, including with the use of reconfigurable devices, such as FPGAs” (id. at 33). Moreover, Petitioner reasons that combining the teachings of Tuan and Miller with those of Nollet “merely involves incorporating known features that are explicitly disclosed in Tuan and/or Miller and would have been understood by [one of ordinary skill in the art] as likely present but not explicitly disclosed by Nollet.” Id. at 34. Accordingly, we understand the Petition to be applying Tuan and Miller mainly as alternatives to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. Although Petitioner highlights the Petition’s citation to Redaelli for claim element [1.10], quoted above in § I.E, and argues that the Office did not find this limitation to be present in the prior art (Pet. 5), Petitioner relies primarily on Nollet for element [1.10] (see id. at 58–59). Specifically, the Petition asserts that one of ordinary skill in the art “would have understood Nollet as minimizing reconfiguration of a processing unit assigned to a task that has a preference for that processing unit when the processing unit is already executing the task and has not yet completed it,” and only relies on Redaelli “[a]lternatively, with respect to [the obviousness ground based on Nollet, Tuan, Miller, and Redaelli].” Id. at 59. Further, Petitioner asserts that “[l]ike Nollet, Redaelli is directed to partially and dynamically reconfigurable FPGAs,” and reasons that adding the teachings of Redaelli to the combined teachings of Nollet, Tuan, and Miller “merely involves incorporating known features that are explicitly disclosed by Redaelli and would have been understood by [one of ordinary skill in the art] as likely present, but not explicitly disclosed by Nollet.” Id. at 37. Therefore, as with Tuan and Miller, Petitioner appears to apply Redaelli as an alternative to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. In addition, Petitioner fails to distinguish the relied upon disclosure in Redaelli from Creamer or Young, both of which were cited and substantively discussed by the Examiner in the Notice of Allowance. See Ex. 1002, 87– 88.8 Based on the current record, we determine that Tuan, Miller, and Redaelli are essentially cumulative to Nollet or other prior art cited by the Examiner, and conclude that the first part of the Advanced Bionics framework is satisfied. See Advanced Bionics, Paper 6 at 7–8. b) Whether the Same or Substantially the Same Arguments Previously Were” slip op. at 18
Discretionary denialcites PhillipsPatents in suitUS 10,963,306 - Hewlett Packard Enterprise Company v. K.Mizra LLCInstitution deniedPTAB · Oct 31, 2022 · IPR2022-00843 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been unpatentable over Gleichauf, Ovadia, and Lewis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the addition of Lewis would allegedly provide, we conclude that Petitioner fails to show that a skilled artisan would have been motivated to combine Lewis with Gleichauf. Cf. In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient absent an explanation of why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”).6 Petitioner does not adequately explain why one of skill in the art would have substituted Lewis’ quarantine server for Gleichauf’s remediation server. Due to the lack of a sufficient motivation to combine, Petitioner has not shown a reasonable likelihood of proving claim 1 unpatentable over the combination of Gleichauf, Ovadia, and Lewis. And, for the same reasons, Petitioner has not shown a reasonable likelihood of proving independent claims 10 and 17 or dependent claims 2–9, 11–16, and 18–20 unpatentable.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find these arguments insufficient because they do not show that the artisan would have made the combination. Instead, they show, at best, that Gleichauf and Lewis could have been combined to meet the subject 5 Petitioner does not argue, so we do not consider, whether Gleichauf’s remediation server might be considered a “quarantine server.” limitations, which is not enough. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,516,048 - PTAB · Oct 14, 2022 · IPR2022-00741 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–19 on all six asserted §103 grounds, finding a reasonable likelihood of success on the MIT2002, MIT2003, and MIT2004 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review (“IPR”) of claims 1–19 of U.S. Patent No. 10,355,975 B2 (Ex. 1001, “the ’975 patent”). Paper 1 (“Pet.”). Rex Computing, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute 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). An inter partes review may not be instituted on fewer than all claims challenged in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’975 patent was filed. Pet. 6. Relying upon the Conte Declaration, Petitioner asserts a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or a related subject matter, plus at least two years of professional experience in the field of microprocessor design or a similar field. . . . and more experience would compensate for less formal education, 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this preliminary stage of the proceeding. and vice versa.” Id. (citing Ex. 1002 ¶¶ 27–30). At this juncture, Patent Owner has not provided an assessment of the level of ordinary skill in the art. See Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Conte Declaration and is consistent with the ’975 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“of any claim term is necessary at the institution stage. Prelim. Resp. 7–8. Patent Owner asserts that the different litigation constructions need not be resolved because institution should be denied for other reasons, relying on the plain language of the claims. However, because Patent Owner addresses the interpretation of “data packet” in contesting Petitioner’s application of Olofsson, further briefing on the construction of that term is recommended. Id. at 8. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree that no constructions are required at this preliminary stage for the above-disputed terms; therefore, we do not directly address the parties’ proposed constructions, except as discussed, infra, with respect to the asserted contentions of obviousness.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“threshold showing that these references are prior art patents or printed publications under 35 U.S.C. § 102. See Pet. 3–4; Ex. 1005, codes (22), (43); Ex. 1006, codes (22), (45); Ex. 1007, codes (22), (63). With respect to MIT2002, MIT2003, and MIT2004, Petitioner relies upon a declaration of Dr. Sylvia Hall-Ellis to establish the provenance of these references. Pet. 10. Dr. Hall-Ellis states that MIT2002 was “available on March 1, 2002, in the ACM Digital Library and on August 7, 2002, in the IEEE Xplore database.” Ex. 1016 ¶ 51. Dr. Hall-Ellis further states that the IEEE Micro article publication became publicly available on, or shortly after, April 17, 2002. Id. ¶ 53.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,355,975
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.