- PTAB · Dec 29, 2022 · IPR2022-01078 · APJ Scott B Howard · IPR · Institution
The Board instituted review of claims 1–9 and 11–13 on all asserted grounds, finding a reasonable likelihood that claim 1 would be obvious over Pedersen, Visser, and Alves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Pedersen, Visser, and Alves. See Pet. 14–40 and 49–68. Based on the current record, we are persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 1.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“date, not the scheduled trial date. Interim Fintiv Guidance at 8–9. Because the Final Written Decision will be due approximately 2 months after the expected trial date, this factor weighs slightly in favor of exercising our discretion to deny the Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. Patent Owner agrees that the claim limitations should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” Prelim. Resp. 13. Patent Owner also points out that Petitioner advances a different claim construction in the district court proceeding. Id. at 14. For the purposes of this Decision, we need not expressly 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
“(“PHOSITA”)7 “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The PHOSITA could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 13 (citing Pet. 13). Accordingly, for purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.8” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,057,701 - Tesla, Inc. v. Arsus, LLCInstitutedPTAB · Dec 23, 2022 · IPR2022-01216 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–21 on all presented grounds, finding a reasonable likelihood of unpatentability based on the Dechamp combinations and Inagaki.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] 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 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 at 8 (PTAB Feb. 13, 2020) (precedential); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors (a)–(f) to consider in evaluating the applicability of § 325(d)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–21 of the ’877 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have had at least a Bachelor’s of Science in mechanical engineering, electrical engineering, or a related technical field pertinent to automotive control or safety systems, along with two or more years of experience working with automotive control or safety systems.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“At this stage, Petitioner sufficiently shows that claims 1, 8, and 15 do not recite sufficient structure for performing the recited function. See Pet. 14–15 (citing Ex. 1003 ¶ 51), 20 (citing Ex. 1003 ¶¶ 52–53). Based on the preliminary record, we agree with Petitioner that (1) claims 1, 8, and 15 include functional recitations, (2) the phrase “mode that allows” recited by claims 1 and 8 is equivalent to using the means-plus-function language “means for,” and (3) the “apparatus” recited by claim 15 does not provide sufficient structure to avoid interpreting under § 112(f). See id. at 14–15, 20. Without further argument or supporting evidence from the record, the mere recitations of “vehicle,” “steering wheel,” and “rolling wheel” do not show how these recited components, without others, can perform the recited functions of independent claims 1, 8, and 15. See Prelim. Resp. 16–17, 19. would be required to “prevent[] said vehicle from being steered beyond a rollover threshold of said vehicle,” as recited by claim 1. See, e.g., Ex. 1001, Fig. 1. Patent Owner also does not address at this stage why “mode that allows” should not be considered equivalent to means-plus-function language. See Prelim. Resp. 18. At this early stage, Petitioner sufficiently rebuts the presumption that § 112(f) does not apply. See Pet. 14–21. We, therefore, preliminarily adopt Petitioner’s proposed means-plus- function interpretations for claims 1, 8, and 15. In particular, for claim 1, we agree that the recited function is allows a vehicle to be steered within a maximal non-rollover steering range of motion of said vehicle but prevents said vehicle from being steered beyond a rollover threshold of said vehicle at any rollover capable speed of said vehicle regardless of the source of an oversteer rotational load applied to a steering wheel of said vehicle. Pet. 15–16 (citing Ex. 1003 ¶ 51); Ex. 1001, 10:7–12. We also agree that the corresponding structure for the asserted function is the first embodiment of the ’877 patent (“Corresponding Structure #1”). Pet. 17–18 (citing Ex. 1001, 2:35–39, 2:48–52, 2:57–3:18, 5:15–21, 5:29–57, 5:63–65, 6:17– 7:38, 7:45–54, Figs. 1–4B). We further agree that the corresponding structure can also be the fourth embodiment of the ’877 patent (“Corresponding Structure #2”). Id. at 18–19 (citing Ex. 1001, 7:45–54, 8:12–17, 8:25–34, 8:58–10:4, Figs. 5–7A; Ex. 1003 ¶ 54).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,077,877 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01179 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition did not show a reasonable likelihood of proving any claim unpatentable, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1073 proceeding, we denied institution, because “Petitioner [in the 1073 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01073 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1073 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1073 proceeding. IPR2022- 01073 Paper 10. B. Motion for Joinder” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1073 proceeding.” Mot. 1. Because we did not institute review in the 1073 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,630,234 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01178 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on all challenged claims because the identical petition and evidence had not shown a reasonable likelihood of prevailing, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1072 proceeding, we denied institution, because “Petitioner [in the 1072 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01072 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1072 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1072 proceeding. IPR2022- 01072 Paper 10. B. Motion for Joinder” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1072 proceeding.” Mot. 1. Because we did not institute review in the 1072 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,630,234 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01181 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition in IPR2022-01075 failed to show the cited art disclosed every claim limitation; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1075 proceeding, we denied institution, because “Petitioner [in the 1075 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01075 Paper 10, 20–21. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1075 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01075 Paper 10) in the 1075 proceeding.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1075 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1075 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 10,880,721 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01180 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition and evidence had not shown that the cited art disclosed every limitation of any challenged claim; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Preliminary Response in the 1074 proceeding, we denied institution, because “Petitioner [in the 1074 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01074 Paper 10, 25. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1074 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01074 Paper 10) in the 1074 proceeding.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1074 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1074 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 10,880,721 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01163 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 9
- BurdenDenied
“Here, Petitioner’s approach of arguing that every limitation in the claims challenged under Ground 1 can be both anticipated by and obvious over Koederitz fails to identify with sufficient specificity the approach that Petitioner intends to invoke. Although arguing in the alternative is generally permissible, in this case, both the Petition and Petitioner’s expert fail to explain in adequate detail which, why or how the identified elements of Koederitz, or the addition of the knowledge of one of ordinary skill in the art to Koederitz’s elements, meet the limitations of the challenged claims. In each subsection discussing the limitations of claim 1, Petitioner relies on Koederitz, seemingly individually, but then adds language indicating that, with respect to limitations 1[c], 1[d], and 1[e], a “POSITA would understand that . . .” or “SPC techniques would be understood by a POSITA to . . . .” Pet. 16–19. This leaves it unclear whether Petitioner intends to rely on Koederitz as an anticipation reference, or Koederitz as an obviousness reference, or something else.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“adequately explained how Koederitz’s sensors meet the limitations of at least independent claims 1, 9, 18, and 22. Patent Owner argues that Koederitz discloses “redundant sensor[s] at each respective sensed position, such that each sensing act is performed by two or more sensors at each location.” Prelim. Resp. 30 (citing Ex. 1004, 8:4–7, [sic] 7:5–9). With respect to limitation 1[b], “monitoring a plurality of signals with a computerbased monitoring system, each signal being associated with one of the three or more oilfield equipment subsystems,” Petitioner relies on Koederitz’s disclosure that a “programmable system controller 100 and one or more sensors 80, 82, 84, and 95” may “sense and/or receive information pertaining to one or more well bore and/or drilling parameters.” Pet. 15–16 (citing Ex. 1004, Abstract, 6:19–24, 6:37–44). Petitioner further argues that Koederitz’s disclosure of different parameters “which may be sensed and input to the controller 100” may include, i.e., mud tank volume/level, mud pump rate and/or stroke counter, fluid pressure in the mud system and the drill string, well bore pressure near the surface, and/or the positions of the choke and the blowout preventers, and these are the “type of oilfield equipment subsystems monitored.” Id. at 16 (citing Ex. 1004, 6:37–44). As argued by Patent Owner, however, the portion of Koederitz that discusses comparison of signals from sensors 80, 82, 84, 94, and 95 may pertain only to “duplicate sensors that monitor repeat signals” from the same location. Prelim. Resp. 30–31. The portion of Koederitz that discusses comparison of sensed signals relied upon by Petitioner (i.e. signals from sensors 80, 82, 84, 94, and 95) discloses that the “sensed information from each sensor at a respective position may be compared to the other sensed information at that respective position to determine the accuracy, variance, and/or reliability of the sensed value.” Ex. 1004, 7:9–13; see also id. at 10:66–11:2 (“well bore annulus pressure sensor 84 and the drill pipe pressure sensor 80 may include one or more additional respective sensors to provide a second measurement or sensing of the respective pressure being sensed”). This does not support Petitioner’s argument that each of these signals are compared among each other, and therefore among different subsystems, as required by claim 1. Rather, it appears that Koederitz discloses comparing duplicate signals from the same position, and compares those duplicate signals to each other to ensure accuracy of the signal received from that position. Petitioner does not, therefore, clearly articulate how Koederitz’s sensing and comparison of its redundant signals maps to the required “each signal being associated with one of the three or more oilfield equipment subsystems” limitation of claim 1[b] or the “comparing at least some of the signals” associated with one of the three or more oilfield equipment subsystems limitation of claim 1[d]. Additionally, with respect to limitation 1[e], which requires indicating that “at least one oilfield equipment subsystem’s signal . . . does not agree with at least two other oilfield equipment subsystems’ signals,” Petitioner generalizes that the method and system of Koederitz identifies sensor failures, erroneous data, and sensor inconsistencies with in a system with a multitude of equipment subsystems and therefore “necessarily teaches the step of” limitation 1[e]. Pet. 18–19; Ex. 1003 ¶ 61. This explanation also fails to find support in Koederitz’s disclosure of monitoring duplicate signals from the same location, as discussed above, and fails to articulate with sufficient clarity how these disclosures anticipate or necessarily teach the disclosures of limitation 1[e].” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,574,325 - Inductev Inc. v. Witricity CorporationAll claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23
Patent outcomesUS 8,304,935 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,304,935 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., 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))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., 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))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 7,894,837 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837
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.