- Apple Inc. v. Mozido Corfire-Korea, Ltd.All claims unpatentablePTAB · Dec 27, 2023 · IPR2022-01149 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over the asserted combinations of Hertel, Chitti, Spodak, and Tedesco, with additional references for claims 5–10.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see any substantive difference between the parties’ proposals. We adopt Petitioner’s definition of the level of ordinary skill because it is consistent with the ’692 patent and the applied prior art, but note that our obviousness evaluation would not differ if we were to apply Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Other than the claim terms discussed below, we determine that we do not need to expressly construe any other terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not agree with Patent Owner because there are several issues with its proposed construction. First, the claims do not recite that a temporary payment card “can only be used for a payable time” nor does Patent Owner direct us to specific claim language suggesting the claims should be limited to the two embodiments identified by Patent Owner. EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”). The claim language is not limited to the embodiments identified by Patent Owner. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). Claim limitation 1.8, for example, recites only “resetting the setting of the temporary payment card when the payable time passes such that the mobile payment card is no longer set as the temporary card and payments are made through a main card.” Ex. 1001, 8:3–6. This limitation broadly relates to embodiment 2 listed above (i.e., “if no payment is made with the temporary payment card during the payable time, the main payment card is reset at the expiration of the payable time”), and is not limited to embodiment 1 listed above. Second, Patent Owner’s proposed construction renders superfluous portions of limitation 1.8. If “temporary payment card” is construed so that it “can only be used for a payable time,” then this construction renders superfluous the portion of limitation [1.8] that specifically recites a condition on resetting the temporary payment card (“when the payable time passes . . . .”). Ex. 1020 ¶ 25. Third, Patent Owner’s proposed construction that the temporary payment card “can only be used for a payable time” excludes embodiments in the ’692 patent. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1320 (Fed. Cir. 2005) (“A claim construction that does not encompass a disclosed embodiment is rarely, if ever, correct.” (alteration omitted)). The ’692 patent, for example, discloses that a user can reset the temporary payment card “even if the payable time remains” by sliding down the temporary payment card on the screen. Ex. 1001, 5:16–19 (“When the user intentionally slides down the temporary payment card as shown in FIG. 13 even if the payable time still remains, the setting of the temporary payment card is reset.”). Thus, the ’692 patent does not require that the temporary payment card can “only be used for a payable time” because a user may intentionally remove the card before the payable time expires.” slip op. at 15
- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION8 For the reasons discussed above, we determine Petitioner has proven, by a preponderance of the evidence, that all of the challenged claims are unpatentable, as summarized in the following table:” slip op. at 61
Patent outcomesUS 10,223,692 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,223,692 - PTAB · Dec 15, 2023 · IPR2023-00941 · APJ Jameson Lee · IPR · Institution
The Board instituted inter partes review of claims 1–18 on the asserted §103 ground over Kimura, 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
“j) Conclusion For reasons discussed above, Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of claim 7 over Kimura. 4. Dependent Claims 9–12 Claims 9–12 each depend, directly or indirectly, from claim 7. Ex. 1001, 9:59–10:19. Petitioner specifically addresses all of them in detail. Pet. 56–62. Petitioner’s assertions are supported by the cited evidence, and Patent Owner does not present any argument additional to those it presents for claim 7. Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of each of claims 9–12 over Kimura.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“In particular, we are persuaded preliminarily that an ordinarily skilled artisan would have known to implement a version of the pixel circuit shown in Figures 33A–33E of Kimura with all pMOS transistors. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are sufficiently persuaded that there is general interchangeability of nMOS and pMOS transistors used as switching transistors. Thus, we are sufficiently persuaded, for institution purposes, that it would have been obvious to one of ordinary skill in the art to make a modification of Kimura’s embodiment shown in Figures 33A–33E to use pMOS type transistors for all switching transistors in the pixel circuit, which leads to an all pMOS version of Kimura’s Figure 33 embodiment.6” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“one of the first or fourth transistor to pMOS type transistor is, if anything, a teaching away from using only pMOS transistors in the embodiment shown in Kimura’s Figures 33A–33E. Prelim. Resp. 28–29. We disagree. That Kimura describes a benefit for making the first and fourth transistor of different polarity types does not constitute a teaching away from having them both being of the same polarity type. A reference teaches away from a claimed invention if it criticizes, discredits, or otherwise discourages modifying the reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has stated: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away . . . because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. Accordingly, in order for there to be teaching away, the statement in Kimura must rise above merely assessing the advantages and disadvantages among viable alternatives. It does not. The Federal Circuit explained that “[c]hoosing one alternative necessarily means rejecting the other,” and that “[t]his interpretation of our case law [treating the choosing of one alternative as a teaching away from the other alternative] fails.” Fulton, 391 F.3d at 1201. Thus, we do not find that Kimura teaches away from making the first and the fourth transistor of the same polarity type.” slip op. at 25
- Expert testimonyPetitioner expert creditedDecided for petitioner
“If the design need is for a transistor to be used as a simple on/off switch, then either an nMOS transistor or a pMOS transistor can be chosen – since, as shown in the figure from Kang and Leblebici 2003 [Ex. 1011] above [in ¶ 56 of the same Declaration], each can function as a simple on-off switch. As the primary operational difference between nMOS and pMOS (when a simple switch is desired) is that the on/off characteristics are the opposite of each other – and the on-off signals to be applied must be altered (i.e., reversed as it were) to account for this. In particular, as described in Section VII.A.1, nMOS devices turn on in response to a “high” voltage on the gate terminal and turn off when a “low” voltage is applied. This is known in the art as “active-high” signaling. pMOS transistors are just the opposite – they turn on when a “low” voltage is applied to the gate terminal and turn off in response to a “high” voltage on the gate. This is known in the art as “active-low” signaling. Changing the polarity of a switching transistor (from nMOS to pMOS or vice versa) would require changing the polarity of the gate signal to achieve the same functionality, but doing so was easy and well-known to a POSITA. Id. ¶ 57 (the reference to Kang and Leblebici 2003 identifies a figure which illustrates a CMOS inverter having an nMOS switch and a pMOS switch). The above-quoted testimony of Dr. Foty is not merely conclusory. Rather, it relies on the disclosures of Kang, Leblevici 2003, and Kimura. It also relies on the level of ordinary skill in the art and explains specifically how the change form nMOS to pMOS switching transistor, and vice versa, would be done. Also, notably, Patent Owner does not assert that implementing a switching transistor by a pMOS transistor exceeds the level of ordinary skill in the art. We also preliminarily credit the testimony of Dr. Foty because it currently stands unrebutted.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,414,599 - Matsing, Inc. v. All.Space Networks Ltd. F/K/A Isotropic Systems, Ltd.All claims unpatentablePTAB · Dec 7, 2023 · IPR2022-01108 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–19 are unpatentable under the asserted obviousness grounds based on Matitsine-860 and the other cited references.
Nonecites Phillips · KSR · GrahamPatents in suitUS 10,553,947 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00943 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–4, 6–8, and 11–14 on all petition grounds after finding a reasonable likelihood that claims 1 and 11 are obvious over Poupyrev and Yun.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’524 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Meta argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction, including implementation of computerbased systems and software for providing haptic feedback effects to a user.” Pet. 4–5 (citing Ex. 1002 ¶¶ 12–13). At this stage, Immersion does not contest this definition of the level of ordinary skill. See Prelim. Resp. 9. Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’524 patent, we adopt Meta’s articulation of the level of ordinary skill for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,896,524 - PTAB · Dec 6, 2023 · IPR2023-00947 · APJ Michael R Zecher · IPR · Institution
Instituted IPR on claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Meta has provided a Sotera stipulation. Pet. 4; see also Prelim. Resp. 29 (Immersion acknowledging that Meta offered a Sotera stipulation). We do not agree with Immersion’s argument that we can effectively ignore the interim guidance in the Director’s Memo because, prior to her guidance, another Board panel did not find a Sotera stipulation to be sufficient to overcome a trial date scheduled significantly before the projected due date for a final written decision. Prelim. Resp. 29–30 (citing Cisco, IPR2021-00329, Paper 13). As Immersion correctly notes, the Cisco case issued in July 2021, which is roughly one year before the Director Memo issued in June 2022. See id. at 29. The Director Memo clearly states that it is “binding agency guidance,” which, in essence, abrogates any prior inconsistent holdings by Board panels regarding the application of Fintiv, including the non-precedential holding in the Cisco case relied on by Immersion. Director Memo at 3. Put simply, because Meta has provided a Sotera stipulation, the Director Memo is controlling and the Fintiv factors are not a basis for denying institution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions for the claim term “free space” in the district court case, but Meta nonetheless contends that it “does not believe any term of the ’298 patent requires express construction at this time because . . . the claims are obvious under the constructions proposed by both parties in the pending litigation, or any other reasonable construction.” Pet. 6 (citing Ex. 1007, 2–3 (“Joint Claim Construction Statement” submitted by the parties in the district court case)). In its Preliminary Response, Immersion contends that “all claim terms should be afforded their ordinary and customary meaning, as [would have been] understood by a [person of ordinary skill in the art], in the context of the [’298] patent specification.” Prelim. Resp. 9 (citing Ex. 2002 ¶¶ 37, 38 (Declaration of Gregory Abowd, D.Phil.)). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4–5 (citing Ex. 1002 ¶¶ 12, 13). Relying on the testimony of Dr. Abowd, Immersion offers the same assessment of the level of ordinary skill in the art, except Immersion excludes industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body. Prelim. Resp. 8–9 (citing Ex. 2002 ¶ 11). The level of skill advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer science, or an equivalent degree. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise its arguments exclusively on its own industry experience. To the extent necessary, and for purposes of institution, we adopt Meta’s assessment of the level of ordinary skill in the art because Dr. Cooperstock’s identification of relevant industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body, is consistent with the ’298 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The dispute between the parties appears to center on how Nogami’s system assigns reference intensity levels to each of stimulation generation units 10–12 worn by user 1. Relying on the testimony of Dr. Cooperstock, Meta asserts “[i]t would have been obvious to implement Nogami to provide an identifier for each stimulation generation unit [10, 11, and 12] in order to allow CPU 201 to distinguish and associate it with the region of the body [of user 1] on which it is worn.” Pet. 33 (quoting Ex. 1002 ¶ 89). At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because it is consistent with Nogami’s disclosure that CPU 201 generates operation setting information (e.g., the reference intensity levels) for controlling the operation of stimulation generation units 10–12, which can vary based on whether these stimulation generation units are located in attention range 50. Ex. 1003 ¶¶ 120, 174, Fig. 4, step 406. Dr. Cooperstock further testifies that “[t]he concept of an ‘identifier’ for a peripheral is a basic concept in computer science or engineering” because [i]t was elementary knowledge of ordinary skilled artisans that virtually all objects on a computer capable of being operated on or manipulated by a computer – such as peripheral device, a computer file, and even a location within the computer’s memory – are associated with an identifier that allows the computer to identify the object and distinguish it from other objects in the computer. Ex. 1002 ¶ 90. At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because Nogami discloses an example of using an identifier in this way. That is, Nogami disclose using barcode 45 that “indicates ID [identification] information (e.g., an ID) unique to the stimulation generation unit 10.” Ex. 1003 ¶ 206, Fig. 11. Although Nogami discloses the example of barcode 45 only in relation to stimulation generation unit 10, it seems reasonable for a person of ordinary skill in the art to infer this teaching of barcode 45 equally applies to stimulation generation units 11 and 12 so that CPU 201 may also use barcode 45 as unique identifiers for these two stimulation generation units to distinguish them from stimulation generation unit 10. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Taking into account Nogami’s disclosure with respect to assigning different reference intensity levels depending on the region of the body of user 1 on which stimulation generation units 10–12 are worn, together with Nogami’s teaching or suggestion of using an identifier (e.g., barcode 45) that indicates ID information unique to each of stimulation generation units 10– 12, we are persuaded that the preliminary record supports that it would have” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,248,298 - Samsung Electronics Co., Ltd. / Apple Inc. et al. v. Smart Mobile Technologies LLCNo claims unpatentablePTAB · Nov 30, 2023 · IPR2022-01002 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–9 and 12–20 were not shown unpatentable under § 103 over Paulraj and Heath because the combination did not teach or suggest the claimed plurality of antennas.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas—one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas—one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims.” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“We determine these arguments are not grounded in or supported by the Petition or within the scope of reasonable reply arguments. Nothing in the Petition maps any limitations of the challenged claims to alleged teachings in Paulraj of antennas that perform both transmission and reception. Thus, we agree with Patent Owner (Sur-Reply, 7) that this argument in Petitioner’s Reply would improperly recast Petitioner’s reliance on Paulraj and is therefore untimely. Moreover, we agree with Dr. Cooklev (Ex. 2004 ¶ 37) that Paulraj is consistent in describing separate transmit units and receive units throughout its disclosure, and without an appropriate mapping of Paulraj’s alleged teachings of transmit/receive antennas to the challenged claims in the Petition, Petitioner has not carried its burden to show unpatentability under such a theory, even if it were timely.” slip op. at 16
Patent outcomesUS 9,191,083 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,191,083 - Akin Gump Strauss Hauer & Feld LLP v. Xcential Corp.Institution deniedPTAB · Nov 28, 2023 · DER2022-00004 · APJ Justin T Arbes · DER · Institution
The Board denied institution because Petitioner did not show that Respondent’s claims 1–5 were the same or substantially the same as the allegedly disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown sufficiently that claims 1–5 of Respondent’s ’233 application are the same or substantially the same as the invention allegedly disclosed to Respondent. Consequently, Petitioner has not made a sufficient showing of derivation as to Respondent’s claims 1–5 to warrant institution of this proceeding. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(3)(i). III. CONCLUSION Based on the arguments and evidence presented by Petitioner, substantial evidence, unrebutted, does not support a conclusion that the claims of Respondent’s ’233 application constitute derived inventions. Therefore, we do not institute a derivation proceeding.” slip op. at 29
- BurdenDenied
“same or substantially the same as (i.e., patentably indistinct from) the invention allegedly disclosed to Respondent. As an initial matter, we note that the Petition does not specifically compare the allegedly disclosed invention as a whole to Respondent’s claim 1 and explain “why” they are the same or substantially the same. See 37 C.F.R. § 42.405(b)(3)(i). Rather, Petitioner argues that Mr. Agnello conceived and communicated certain general concepts, then cites certain groups of claim limitations for each concept (without tying such arguments to the particular language of claim 1). See Pet. 34–39 (addressing the preamble of claim 1), 39–41 (grouping limitations [a] and [b] under the general concept of “creating a ‘snapshot document’ including at ‘least one provision of law to be changed’”), 42–46 (grouping limitations [c]–[f] as “known concepts of ‘receiving changes to the snapshot document’ and ‘creating an updated snapshot document’”), 46–50 (grouping limitations [i]–[l] as “known concepts of ‘analyzing the updated snapshot document’”), 50–56 (grouping limitations [n]–[q] under the general concept of “analyzing the XML changes document to generate a bill representation”).5 Petitioner, in its supplemental paper, also ambiguously identifies 37 pages of the Petition as showing where it articulated the invention allegedly disclosed to Respondent. See Supp. 1–2 (citing Pet. 1, 2, 6, 9–13, 17–20, 28, 29, 33–47, 49–55, 58). To determine whether Petitioner has satisfied the requirement of 37 C.F.R. § 42.405(b)(3)(i), we consider the differences between Respondent’s claim 1 and the invention allegedly disclosed to Respondent, and then assess the arguments in the Petition, including those at the cited pages, to determine whether, notwithstanding those differences, Petitioner has shown sufficiently that the two are patentably indistinct.6” slip op. at 19
NonePatents in suitUS 11,989,794 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00979 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1, 2, 4, 5, 15, and 20 are unpatentable as obvious over the instituted grounds involving Rautiola, Regnier, Sainton, and, for claim 4, Wilson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a 3 Patent Owner has not directed us to any objective evidence of non-obviousness. See PO Resp. hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain 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.” Id. Petitioner states a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petitioner’s proffered level of skill discussed by Petitioner’s declarant. See PO Resp. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed 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).” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of the inventor’s endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree. Rautiola teaches that its server can distribute various voice, e-mail, and data services to client computers, such as laptop 9. Ex. 1005, Fig. 2, 4:31–34, 1:31–36; Ex. 1003 ¶¶ 148, 202. And, as Petitioner explains, Regnier’s technique of a server that (i) downloads, to a client device, client-side portions of application services and (ii) dynamically controls whether the client device can use and/or access the service, discloses a server that enables converting a client between a plurality of functions (e.g., office telephone, database, e-mail). Pet. 54 (citing Ex. 1003 ¶¶ 156–159, 202). Thus, Petitioner demonstrates that it would have been obvious to a person of ordinary skill in the art “to combine Rautiola’s singular server that provides services, such as database, phone calls, data, fax, e-mail and voice mail services, with the implementation details of Regnier describing that a server provides services to a laptop by downloading client-side portions (‘providing a plurality of functions to the mobile device’).” Pet. 48–49 (citing Ex. 1003 ¶¶ 149–150). We determine that Petitioner has proven, by a preponderance of the evidence, that Rautiola and Regnier teach limitations 1.9 and 20.9.” slip op. at 30
Patent outcomesUS 9,049,119 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,049,119 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00813 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–13 and 16–20 are unpatentable, principally as obvious over the cited combinations; the Board did not reach the Vaios and Naidoo-068 anticipation grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that its proposal for the level of ordinary skill should be applied in this Petition, particularly in the absence of any counter proposal from Patent Owner. Petitioner’s expert used the correct factors to arrive at its proposed level of skill in the art, and we agree with Petitioner that its proposal is also consistent with the prior art cited in the Petition. Reply 2; accord Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We also find the proposed level of skill in the art consistent with the amount of detail and explanation of the technology that is given in the ’614 patent itself. Accordingly, we apply Petitioner’s proposal for the level of ordinary skill in the art in this decision. D.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner argues that Petitioner’s expert provided no support for these statements. Resp. 41. Petitioner disagrees, contending that Dr. Hochwald adequately supports these statements with evidence. Reply 15 (citing Ex. 1002 ¶¶ 117–120; Ex. 1051 ¶¶ 34–37, 41–42). As support, Dr. Hochwald states that implementing wireless transmission and reception into cameras was well known, and such cameras were commercially available. Ex. 1051 ¶¶ 34–35; Ex. 1004, 20:2–22, 21:1– 22:15; Ex. 1038 (embedded Bluetooth CCD camera); Ex. 1045 (press release for AXCESS wireless security camera with streaming video). Dr. Hochwald further states that the basic architecture of the combined system would not change merely because the communication protocol between the camera and the local computer system is wireless instead of wired. Ex. 1051 ¶ 36. We agree with Dr. Hochwald and find Dr. Hochwald’s statements are not merely ipse dixit, but are adequately supported with underlying facts and data. See 37 C.F.R. § 42.65(a). Patent Owner further argues that Petitioner’s expert never did an analysis identifying the “changes in interface, complexity, cost, or methodology” for modifying the architecture and system in Vaios, and that this dooms the challenge ground because Vaios requires the solution to be “inexpensive.” Resp. 41 (citing Ex. 1003, 1:60–63). Dr. Hochwald’s statement, however, indicates that changing the interface from wired to wireless was “simple” and not prohibitively costly, and thus did not require the detailed analysis that Patent Owner seeks.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In sum, Petitioner contends that no claim construction is necessary. Patent Owner argues that it disputes Petitioner’s claim constructions that it allegedly made for its anticipation and obviousness arguments. However, Patent Owner does not identify what those allegedly disputed claim terms are nor what meanings should be ascribed to them. As no specific controversy over claim language has been identified to us, we decline to construe any claim term explicitly and instead will apply the ordinary and customary meaning as understood by a person of ordinary skill in the art in this decision. See supra Nidec; Wellman; Vivid Techs. E.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Accordingly, “there [were] apparent reason[s] to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. j) Reasons for Combining Vaios and Saylor Patent Owner alleges that Petitioner has not explained how or why Saylor and Vaios would be combined. Resp. 52. Patent Owner argues that Saylor teaches “[h]ome security systems offer limited services . . . The industry itself has remained stagnant and inflexible.” Id. (citing Ex. 1008, 1:54–57) (second alteration in original). Patent Owner asserts [n]othing in the Petition or expert declaration explains how or why one would combine the apparently incompatible limitations of Vaios (e.g., local computer, camera, network requirements) and Saylor (e.g., need for long battery life, wireless connection, and reduced alarm notifications). Id. Patent Owner’s arguments do not address Petitioner’s reasons to combine Vaios and Saylor. Pet. 14. Petitioner stated that the combination incorporates known elements (e.g., associating respective individuals with specific devices via a database/address book as taught in Saylor) into Vaios’ system (e.g., local computer system 12) in a known manner to yield predictable results, and had a reasonable expectation of success. Id. Petitioner further stated that the proposed combination offered advantages that would have motivated a person of ordinary skill in the art to make the combination, such as providing notifications and data to specific, desired individuals per user preferences and assigning a notification priority that conserves system resources and speeds alarm response by contacting” slip op. at 35
Patent outcomesUS 8,164,614 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,164,614
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.