- Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01153 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 30, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- 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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 23; Prelim. Resp. 6. Therefore, we do not construe the claims. D.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01134 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that 7 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 29, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 23–24 (citing Stern Decl. ¶¶ 27–28). Patent Owner utilizes Petitioner’s proposed level of skill in the art “[f]or the purposes of this Preliminary Response only.” Prelim. Resp. 7. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. 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 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - 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 - Metrasens, Inc. / Metrasens, Ltd. v. Keith A. KoppAll claims unpatentablePTAB · Dec 21, 2023 · IPR2022-01224 · APJ Ulrike W Jenks · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Votruba, Jaquet, Finn, and Seton because their combination teaches the claimed MRI protection arrangement.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer an alternate definition and agrees that Petitioner’s definition is reasonable. Patent Owner suggests that “one equivalent to an electrical engineering degree would be a degree in physics.” PO Resp. 2. The level of skill in the art is a reference point for gauging what would have been obvious based on the reference disclosures. See Okajima, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner, however, does not explain how its definition provides a reference point that would meaningfully alter the Petition’s assertions of obviousness. We do not discern a meaningful difference between the definition of a person of ordinary skill in the art encompassing an electrical engineering degree or a physics degree with several years of experience in magnetic sensors and MRI. For purposes of this decision, we analyze the asserted prior art with respect to the level of skill set forth by Petitioner, but there would be no difference in the outcome of this Decision if we were to substitute a physicist for an electrical engineer as suggested by Patent Owner.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“According to the specification of the ’128 patent, “the residual magnetic field [is the field] that exists in the vicinity of an MRI apparatus.” Ex. 1001, 2:55–57. The residual lines of magnetic force of the magnet in the MRI apparatus pass through the access opening 14 generally normal to the scan of the Hall effect sensors. The passive sensors in the series 11 and 13 are sensitive to the magnetic force lines along one axis and produce a signal related to magnetic field strength. As a ferrous object (not shown) approaches the access doorway 12, the residual magnetic field is disrupted. Id. 3:23–30. “The potential dangers associated with MRI machines include the presence, within the apparatus and surrounding area, of a strong magnetic field.” Id. 1:42–44. According to the ’128 patent, “[u]sually, the MRI device is located within a shielded room for improved results and also to lessen the impact of the device on surrounding operations.” Id. 1:54–56. Based on these disclosures in the ’128 patent, we determine that the term “residual magnetic field” refers to the magnetic field that radiates outwardly from the MRI apparatus. This is substantially similar to Petitioner’s construction which acknowledges a “non-uniform magnetic field of the MRI apparatus passing through the open doorway.” Pet. 11. In order for the residual field to pass through an open doorway it would need to radiate outwardly from the MRI apparatus. The result in this Decision, however, would be the same even if we were to accept Patent Owner’s proposed modifications to the meaning of “residual magnetic field.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“We have reviewed the parties’ contentions with respect to the “array of passive magnetic field sensors” and agree with Patent Owner that evidence in the prosecution history leading to the ’128 patent does not persuade us that all gradiometers are disavowed. Rather the prosecution history suggests that the gradiometers of Jaquet that are tuned to using the uniform magnetic field of the earth are not able to deal with the non-uniform magnetic field associated with an MRI. Based on the disclosures in the ’128 patent (Ex. 1001) and prosecution history (Ex. 1002) we find that one of ordinary skill would understand the term “array of passive magnetic field sensors” to exclude the gradiometers taught by Jaquet, but would include other gradiometers, including those based on Hall effect sensors.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“record, we determine that Petitioner has sufficiently established by a preponderance of the evidence that the combination of Votruba, Jaquet, Finn, and Seton renders the device of claim 1 obvious. Specifically, we agree with Petitioner that “a POSA would have been motivated to combine the prior art to achieve the claimed invention with a reasonable expectation of success . . . to have used the arrangement of passive magnetic sensors as taught by Jaquet in an opening of an MRI room as taught by Votruba (i.e., the array of sensors per Jaquet for the two sensors in Votruba).” Pet. 49 (citing Ex. 1003 ¶ 90). Therefore, Petitioner has shown by a preponderance of the evidence that claim 1 of the ’128 patent is unpatentable as obvious over Votruba, Jaquet, Finn, and Seton.” slip op. at 42
Patent outcomesUS 7,489,128 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,489,128 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Dec 21, 2023 · IPR2023-01199 · APJ Michelle N Wormmeester · IPR · Institution
Instituted review of claims 1–4, 7–10, 12, and 15–18 on all petitioned grounds, and granted AO Kaspersky Lab’s motion to join IPR2023-00124.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner’s argument is unavailing. Our rules specifically prohibit incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”). We therefore decline to consider, at this 2 Morris et al., U.S. Publ’n No. 2007/0016953 A1, published Jan. 18, 2007 (Ex. 1005). 3 van Oorschot et al., U.S. Patent No. 8,087,087 B1, issued Dec. 27, 2011 (Ex. 1006). 4 Capalik et al., U.S. Publ’n No. 2011/0321166 A1, published Dec. 29, 2011 (Ex. 1008). stage, the arguments presented in the Patent Owner Response in the 124 IPR. Because Patent Owner does not offer other arguments on the merits, for the reasons given in our institution decision in the 124 IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing that the challenged claims would have been obvious. See 124 IPR, Paper 11.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013). As noted above, the Petition asserts the same unpatentability grounds on which we instituted review in the 124 IPR, relying on substantially the same evidence.6 Joinder Mot. 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00124 cease to participate in the instituted [124] IPR proceeding, [Petitioner] will not assume an active role.” Id. at 7–9. Petitioner represents that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner’s] joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [124] IPR Scheduling Order.” Id. at 6– 7. We agree with Petitioner that joinder with the 124 IPR is appropriate under these circumstances. Patent Owner did not file an opposition to Petitioner’s joinder motion. Accordingly, we grant the joinder motion.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for patent owner
“Patent Owner’s argument in this regard also is unavailing. The 124 IPR was instituted on June 15, 2023, and Petitioner filed its joinder motion on July 14, 2023, before the joint motion to terminate in the 124 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 124 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 124 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityNot reached
“This argument also is unavailing. We need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 124 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 5
Discretionary denialPatents in suitUS 9,578,045 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision
Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41
- Skill levelSkill level board ownDecided for patent owner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - PTAB · Dec 20, 2023 · IPR2023-01069 · APJ Robert A Pollock · IPR · Institution
The Board instituted review of claims 1–8 on all three §103 grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and accompanying evidence under 35 U.S.C. § 314. 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We integrate the above considerations into the Advanced Bionics two- part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 58
- Other 314aDenied
“Patent Owner points to § 314(a)27 as a basis for denying institution but provides no substantive argument or evidence on this point. See Prelim. Resp. 2 (citation), 4 (citation), 15 (section heading), 31 (citation in parenthetical). At best, Patent Owner asserts that if we find “that fewer than all three Grounds meet the standard for Section 325(d), institution of Samsung’s petition should still be denied in full, because institution on all three Grounds ‘would not be an efficient use of the Board’s time and 27 Under certain circumstances, the Board may apply its discretion under § 314(a) to deny institution in light of a parallel district court proceeding involving the same patent. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). But as noted by Petitioner, the patent at issue here “has never been asserted in any litigation.” Pet. 63. 66 resources.’” Prelim. Resp. 31 (citing Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative)). Because we decline to exercise our discretion with respect to any of the Grounds under § 325(d), the Board’s Deeper decision is inapposite.” slip op. at 66
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not presently dispute this definition “except to clarify that the POSA would have at least two years of experience in engineering monoclonal antibodies for human therapeutic use, either in the laboratory or industry.” Prelim. Resp. 44–48 (emphasis omitted); see also id. at 48–49 (arguing that Petitioner cannot prove unpatentability of the challenged claims under either party’s definition). At this stage in the proceeding, we accept and apply Petitioner’s proposed definition of the skilled artisan, as being both unopposed by Patent Owner and inclusive of Patent Owner’s additional qualification. In this respect, it appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” encompasses Patent Owner’s proposed modification, and is consistent with the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,590,189 - PTAB · Dec 19, 2023 · IPR2023-01070 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–29 on all twelve asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceedings, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, as being both generally unopposed by Patent Owner and inclusive of Patent Owner’s supplemental definition. It appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” includes Patent Owner’s proposed level of experience. Pet. 17–18. We also take into account the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this institution decision, we find it unnecessary to construe any claim language because it is readily understandable on its face and there is no dispute. 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))). As the case continues, we may determine that certain claim language should be interpreted.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Petitioner, supported by the testimony of Dr. Ravetch, contends that Bowdish is analogous art. Pet. 36–37 (citing Ex. 1003 ¶ 128). In this respect, Dr. Ravetch testifies: A POSA looking for the amino acid sequences encoding eculizumab would have easily found Bowdish, and considered it to be analogous art to Bell and Evans for at least three reasons: (1) it provides express disclosures about the structure of the antibody “5G1.1,” (2) it identifies “Alexion Pharmaceuticals” as the inventors’ addressee that is the same as the assignee for Evans, and (3) it cites to the same Evans patent as does Bell for the structure of 5G1.1. Thus, a POSA would have been motivated to combine the teachings of Bowdish and Evans in view of Bell to arrive at the claimed sequence. Ex. 1003 ¶ 128. On the present record before us, it appears that Bowdish is both reasonably pertinent and within the same field of endeavor as the ’809 patent for the reasons identified by Dr. Ravetch, because it is directed to the construction of a humanized monoclonal antibody comprising a TPO mimetic peptide graft into the heavy chain CDR3 of antibody framework 5G1, and because it uses “the parental 5G1.1” sequence as a control for FACs analysis of the TPO mimetic antibody. See Ex. 1004 ¶¶ 191–193. Moreover, it is reasonable that an ordinarily skilled artisan seeking to understand the Alexion anti-C5 antibody disclosed in, for example, Bell or Hillmen or Hill as a treatment for PNH, would look to other Alexion prior art for guidance.” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“overarching argument that Petitioner’s positions are fatally flawed by hindsight or that “[a] POSA as of March 15, 2007[,] would have understood that Alexion had developed a humanized antibody named ‘eculizumab,’ . . . [b]ut a POSA at that time would not have known that “eculizumab” had the sequence claimed in the ʼ809 patent.” See Prelim. Resp. 4, 7, 9. It appears that Petitioner’s positions here consider only the disclosures of the prior art and how the person of ordinary skill in the art would have read prior art references in view of one another. Regarding Patent Owner’s foundational preliminary argument that all prior art pointed exclusively to Thomas for the structure of eculizumab, rather than to Evans or Tacken or Mueller PCT, for example, we are unconvinced. We find Patent Owner’s position mischaracterizes Bell’s incorporation of Thomas by wholly ignoring that, in the very same sentence, and preceding the cite to Thomas, Bell also incorporates Evans by reference. Ex. 1007 ¶ 52. Bell incorporates Evans as disclosing “[p]articularly useful anti-C5 antibodies . . . h5G1.1-mAb, h5G1.1-scFv and other functional fragments of h5G1.1,” and “[m]ethods for the preparation” of these. Id. It appears that the ordinarily skilled artisan, like Bell’s inventors, would not have looked solely to Thomas for eculizumab’s structure. Moreover, the ’809 patent itself states that Evans, which is a part of Bell, discloses “a preferred whole antibody (now named eculizumab),” and how to produce it. See, e.g., Ex. 1001 12:34–37. Thus, even the ’809 patent, like Bell, acknowledges that Evans is an important reference regarding eculizumab, its structure, and how to make it.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,703,809 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 19, 2023 · IPR2023-01033 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution of IPR challenging claims 1–30, finding substantially the same art had been presented to the Office and no material error was shown under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17– 18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“enzyme complex” and “nucleic acid insert element.” Pet. 21. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 18. We determine that neither of the two limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’357 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:47–48. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 16 (citing Ex. 1003 ¶¶ 17, 93–94, 162); Prelim. Resp. 13 (“Grunenwald further defines ‘transposase’ to mean ‘an enzyme that is capable of forming a functional complex . . . and catalyzing insertion or transposition of the transposon end-containing composition into the double-stranded target DNA with which it is incubated in an in vitro transposition reaction.” (citing Ex. 1003 ¶ 93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’357 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:61–67. This is the meaning that we apply in this Decision.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,738,357 - Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.
RulingsFinal written decision- BurdenFwd mixedMixed
“To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17
Patent outcomesUS 11,026,397 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397
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.