- 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 - Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentablePTAB · Dec 22, 2022 · IPR2019-00811 · APJ Kevin C Trock · IPR · Remand
On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …
RulingsRemand decision- RemandOther
“We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29
Patent outcomesUS 6,851,115 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,851,115 - Stmicroelectronics, Inc. v. Optical Licensing, LLCAdverse judgmentPTAB · Dec 22, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, entered a final written decision, cancelled oral argument, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Here, Patent Owner has expressly requested entry of adverse judgment. Patent Owner’s request for adverse judgment is granted.” slip op. at 2
NonePatents in suitUS 6,791,898 - Configit A/S v. Versata Development Group, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13
Patent outcomesUS 6,836,766 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,766 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01162 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–12 obvious over the asserted combinations.
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”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). C. Level of Ordinary Skill in the Art slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“PHOSITA”) in the relevant field relating to the ʼ333 Patent, in December 2011, would have a Bachelor of Science in Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with corrosion science. Pet. 12–13. Patent Owner applies Petitioner’s definition only for the purposes of the Preliminary Response. Prelim. Resp. 18. 6 The parties have not directed us to any such objective evidence. Petitioner indicates that “Patent Owner has advanced certain ‘secondary indicia’ arguments tied to the claimed invention of the ’333 Patent in an interrogatory response in the USWS litigation.” Pet. 40. But, according to Petitioner, “the record in the USWS litigation has not been fully developed showing objective indicia of nonobviousness.” Id. Patent Owner has not advanced any secondary considerations in the Preliminary Response. See generally Prelim. Resp. appears reasonable, and we adopt that definition for our analysis in this decision. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. We determine that the level reflected in the prior art is consistent with Petitioner’s definition. D. Overview of the Prior Art References” slip op. at 10
- BurdenNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,435,333 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01164 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the claims obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’695 patent, and we do not institute inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“limitations 56[d] (Pet. 37) and 84[e] (Pet. 11)), which requires “using a transfer pump to transfer the fluid to a down hole pump,” Petitioner argues that Heilman discloses “that the final fracturing fluid is directed to a pumping grid 111 and from the pumping grid 111 to two multiple manifold trailers 701 and 702” and a POSITA “would have understood that the pumping grid 111 transfers the fracturing fluid to the pump trucks 703” and in the alternative “would know a portion of the pumps of the pumping grid 111 are transfer pumps and a portion of another portion of the pumps of the pumping grid 111 are downhole pumps.” Pet. 14–16 (citing Ex. 1004 ¶¶ 26, 28, 32; Ex. 1003 generally). As Patent Owner argues, and as we agree, Heilman’s referenced disclosure only describes “that pumping grid 111 is connected to and provides fluid to one or more manifolds,” i.e., 107, 405, 701, or 702, but “there is no indication in Heilman that any of the treatment fluid is transferred from pumping grid 111 to pump trucks 703. Prelim. Resp. 32–33. We also agree that Heilman does not show a “portion of the pumps” being a certain type of pump, i.e. a downhole pump or a transfer pump. Id. at 33–34. We also note the prosecution history of the ’695 Patent, in which the USPTO specifically found that “HEILMAN fails to teach or suggest a transfer pump to transfer the fluid to a downhole pump.” Ex. 1002, 72 (Detailed Reissue Action). Petitioner has not provided any compelling rationale for why we should revisit this determination, or any reasoning that would persuade us to reach a different conclusion.” slip op. at 15
- 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
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also relies on the testimony of Mr. Ely, but Mr. Ely’s testimony similarly falls short. Prelim. Resp. 39 (comparing Pet. 26–27, 32, 35, 40, 42, with Ex. 1003 ¶¶ 83–84, 94, 100, 121, 128). As noted above, Petitioner’s citations to Mr. Ely’s testimony in refer generally to “Ex. 1003” without more particularity, hindering the Board’s ability to determine on which portions of Mr. Ely’s testimony Petitioner intends to rely. See, e.g., Pet. 27–31 (Ground 2), 31–34 (Ground 3), 34–37 (Ground 4). To the extent we have reviewed Mr. Ely’s testimony in connection with the Petition, Mr. Ely’s testimony is entitled to little weight because it fails to explain how one of ordinary skill would have been motivated to make the proposed combination, and it is not otherwise apparent that it does. 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 Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - 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 - PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - PTAB · Dec 20, 2022 · IPR2022-01138 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds after finding a reasonable likelihood that claims 1 and 7 would have been obvious based on Goss.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both House and Goss were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both House and Goss among the references cited, and identifying Goss as cited by the Examiner). Under these circumstances, we find the first part of the Advanced Bionics framework satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner provides very little argument or evidence in support of its motivation to combine argument in the Petition. See Pet. 46. We note that Petitioner does not explain why a “PHOSITA would understand that there is a rational underpinning to combine” Goss and House or cite to any declarant support for its argument. See id. Based on the limited argument, evidence, and explanation provided by Petitioner, on the current record, we question whether Petitioner establishes sufficiently that one of ordinary skill in the art would have had a reason to modify Goss with the teachings of House. Even if Petitioner fails to establish adequately a motivation to combine the references, that does not end our analysis. A “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); see also Game & Tech Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1381 (Fed. Cir. 2019). For the limitations in independent claims 1 and 7, Petitioner does rely on House, but only as an additional reason why the references disclose a limitation in question. See Pet. 46–61 (relying on Goss for every limitation in claims 1, 3–8, 10–16, and 18). Based on our review of the Petition, Petitioner sets forth an analysis based on Goss alone for at least claims 1 and 7, within the context of its second challenge based on Goss and House. See id. Although Petitioner may not need to rely on a combination of Goss and House for the limitations of independent claims 1 and 7, the additional reliance on House may buttress Petitioner’s arguments as to these and other claims. Consequently, the motivation to combine issue may impact whether Petitioner ultimately prevails as to this challenge. The parties may address the motivation to combine issue further during trial.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“adequately that Goss discloses the surface area limitation. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claims 1 and 7. Based on our review of the current record, Petitioner establishes sufficiently that Goss discloses or renders obvious all of the limitations of claims 1 and 7 for the reasons provided by Petitioner. See Pet. 46–51, 53–55. Accordingly, Petitioner establishes a reasonable likelihood that independent claims 1 and 7 would have been obvious based on Goss alone. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2–6 and 8–19. See Pet. 62–68. Patent Owner does not separately address the dependent claims. Prelim. Resp. 29–36. Because we institute inter partes review as to the independent claims 1 and 7, we also institute inter partes review as to dependent claims 2–6 and 8–19. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Because Petitioner relies on Goss for every limitation in dependent claims 3–6, 8, 10–16, and 18, the Petition sets forth a challenge based on Goss alone for these claims as well as claims 1 and 7. See Pet. 49–61. These challenges, as well as the challenge to claims 1–19 based on a combination of Goss and House set forth in the Petition, are part of the instituted grounds at issue during the trial. See id. at 46–61; SAS, 138 S.Ct. at 1359–60. We note that Petitioner relies exclusively on House for dependent claims 2, 9, 17, and 19, and any deficiency in Petitioner’s showing as to the motivation to combine Goss and House may impact whether Petitioner can establish the obviousness of those claims, apart from whether House discloses the limitations in question. See Pet. 51, 53, 55, 60–61 (relying on House as disclosing the limitations in dependent claims 2, 9, 17 and 19).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,026,397 - Google LLC v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,880,721
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.