- PTAB · Dec 31, 2024 · IPR2024-01072 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Jannard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’960 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 10 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 10–11 (citing Ex. 1003 ¶ 28).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 11; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,598,960 - PTAB · Dec 30, 2024 · IPR2024-00958 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–6, including both §103 grounds, after finding a reasonable likelihood that claim 1 is obvious over Parulski.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review. B. Real Party in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “at least a bachelor’s degree in electrical engineering, computer science, or related engineering disciplines, and two years of experience in multi-lens camera systems.” Pet. 3–4. Petitioner further explains that “[r]elevant work experience can substitute for formal education and” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner asserts that “[n]o terms need construction to resolve the unpatentability issues in this Petition.” Pet. 4. Based on the current record, we determine preliminarily that no claim terms require express construction at this stage of the proceeding and that the ordinary and customary meaning of the claim terms should apply. C. Patentability Challenges” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Conclusion as to Independent Claim 1 Based upon the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenge that independent claim 1 of the ’638 patent would have been obvious under 35 U.S.C. § 103(a) over the teachings of Parulski.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,482,638 - PTAB · Dec 23, 2024 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds and granted DIRECTV’s motion to join the DISH IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to institute review under 35 U.S.C. § 314(a), which provides that 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.” For the reasons set forth below, we institute an inter partes review of claims 1 and 3 of the ’518 patent and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(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 at 4 (PTAB April 24, 2013).” slip op. at 4
NonePatents in suitUS 7,594,249 - PTAB · Dec 23, 2024 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all petition grounds and joined DIRECTV to the DISH IPR, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth in the 393 Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’518 patent. Thus, we institute an inter partes review on all grounds and all challenged claims of the ’518 patent set forth in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon review of Petitioner’s arguments, which were not opposed by Patent Owner, we agree that joinder of this proceeding with the DISH IPR is appropriate. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 7,295,518 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is 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. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01066 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 under all three obviousness grounds and granted NXP’s conditional motion to join the Texas Instruments IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01066), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00935. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, we institute inter partes review of the Challenged Claim of the ’177 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00935.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“join as a party to [an instituted] inter partes review any person who properly files a petition under section 311 that . . . after receiving a preliminary response under section 313 or the expiration of the time for filing such a response . . . warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is 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.” slip op. at 7
Discretionary denialPatents in suitUS 7,865,177 - PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - Commscope Technologies LLC. v. Belden Inc.All claims unpatentablePTAB · Dec 18, 2024 · IPR2023-01061 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 19, 20, and 22 are unpatentable as obvious over Yanagita, Jachimowicz, and, for claims 20 and 22, Gingue; alternative grounds were not reached.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Based on the record before us and crediting this testimony by Mr. Cornelison, we agree that a POSITA would have understood that Yanagita” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner argues that a “person of ordinary skill in the art of the ’537 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables.” Pet. 14 (citing Ex. 1007 ¶ 12). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g.,1–2 years).” Id. (citing Ex. 1007 ¶ 12). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. During the trial, neither party expressly disputed our definition of a POSITA or explicitly argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Pet. Reply; PO Resp. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningDecided for patent owner
“After institution, Patent Owner argued that the plain and ordinary meaning of twisted pairs requires “two insulated conductors twisted together around one another to form a balanced transmission line” as shown in Figure 4 of the ’537 patent. PO Resp. 13. Petitioner replied that Patent Owner’s addition of “balanced transmission line” to the Board’s preliminary construction is unnecessary as the dispute is whether the conductors of the asserted art are “twisted together” (i.e., twisted around each other) and that neither Petitioner nor Patent Owner dispute that if a pair of conductors are twisted around one another, they form a balanced transmission line. See Pet. Reply 1. Based upon a full record, we maintain our construction of the term “twisted pairs,” which both parties agree require a “pair of insulated conductors that are twisted together,” (i.e., “two insulated conductors twisted around each other”). We agree with Petitioner that no further construction of the term is required as there is no dispute between the parties that if a pair of insulated conductors are twisted together (i.e., two insulated conductors are twisted around each other), that they form a balanced transmission line. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“c) Motivation to Combine Based upon review of the full record, we determine Petitioner has articulated a sufficient reason a POSITA would have added the foamed polymer tape of Jachimowicz to Yanagita’s cable between core material 2 (separator) and at least one set of twisted pairs. See Pet. 40–42. In particular, Petitioner states that additing a foamed polymer tape to Yanagita’s separtor core material 2 would have been expected to improve the electrical perforamce of the cable by reducing the capitance between twisted pairs on one side of Yanagita’s separator and twisted pairs on the other side, thus reducing current leakage between them and reducing the transmission loss due to such leakage. Pet. 42 (citing Ex. 1007 ¶¶ 45, 139). Petitioner asserts that a POSITA would have been motivated to add a foamed polymer tape, such as Jachimowicz’s foamed polyethlyene tape to Yangida’s core, because it would have been expected to beneficially lower the dielectic contsant of the material between twisted pairs on either side of the separator due to the addition of low-dielectric constant foamed material. Pet. 42–43.” slip op. at 26
Patent outcomesUS 6,998,537 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,998,537 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2023). 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 not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2023). 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 not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659
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