- Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01153 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 30, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 23; Prelim. Resp. 6. Therefore, we do not construe the claims. D.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01134 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that 7 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 29, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 23–24 (citing Stern Decl. ¶¶ 27–28). Patent Owner utilizes Petitioner’s proposed level of skill in the art “[f]or the purposes of this Preliminary Response only.” Prelim. Resp. 7. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - Apple Inc. v. Mozido Corfire-Korea, Ltd.All claims unpatentablePTAB · Dec 27, 2023 · IPR2022-01149 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over the asserted combinations of Hertel, Chitti, Spodak, and Tedesco, with additional references for claims 5–10.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see any substantive difference between the parties’ proposals. We adopt Petitioner’s definition of the level of ordinary skill because it is consistent with the ’692 patent and the applied prior art, but note that our obviousness evaluation would not differ if we were to apply Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Other than the claim terms discussed below, we determine that we do not need to expressly construe any other terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not agree with Patent Owner because there are several issues with its proposed construction. First, the claims do not recite that a temporary payment card “can only be used for a payable time” nor does Patent Owner direct us to specific claim language suggesting the claims should be limited to the two embodiments identified by Patent Owner. EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”). The claim language is not limited to the embodiments identified by Patent Owner. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). Claim limitation 1.8, for example, recites only “resetting the setting of the temporary payment card when the payable time passes such that the mobile payment card is no longer set as the temporary card and payments are made through a main card.” Ex. 1001, 8:3–6. This limitation broadly relates to embodiment 2 listed above (i.e., “if no payment is made with the temporary payment card during the payable time, the main payment card is reset at the expiration of the payable time”), and is not limited to embodiment 1 listed above. Second, Patent Owner’s proposed construction renders superfluous portions of limitation 1.8. If “temporary payment card” is construed so that it “can only be used for a payable time,” then this construction renders superfluous the portion of limitation [1.8] that specifically recites a condition on resetting the temporary payment card (“when the payable time passes . . . .”). Ex. 1020 ¶ 25. Third, Patent Owner’s proposed construction that the temporary payment card “can only be used for a payable time” excludes embodiments in the ’692 patent. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1320 (Fed. Cir. 2005) (“A claim construction that does not encompass a disclosed embodiment is rarely, if ever, correct.” (alteration omitted)). The ’692 patent, for example, discloses that a user can reset the temporary payment card “even if the payable time remains” by sliding down the temporary payment card on the screen. Ex. 1001, 5:16–19 (“When the user intentionally slides down the temporary payment card as shown in FIG. 13 even if the payable time still remains, the setting of the temporary payment card is reset.”). Thus, the ’692 patent does not require that the temporary payment card can “only be used for a payable time” because a user may intentionally remove the card before the payable time expires.” slip op. at 15
- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION8 For the reasons discussed above, we determine Petitioner has proven, by a preponderance of the evidence, that all of the challenged claims are unpatentable, as summarized in the following table:” slip op. at 61
Patent outcomesUS 10,223,692 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,223,692 - Metrasens, Inc. / Metrasens, Ltd. v. Keith A. KoppAll claims unpatentablePTAB · Dec 21, 2023 · IPR2022-01224 · APJ Ulrike W Jenks · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Votruba, Jaquet, Finn, and Seton because their combination teaches the claimed MRI protection arrangement.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer an alternate definition and agrees that Petitioner’s definition is reasonable. Patent Owner suggests that “one equivalent to an electrical engineering degree would be a degree in physics.” PO Resp. 2. The level of skill in the art is a reference point for gauging what would have been obvious based on the reference disclosures. See Okajima, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner, however, does not explain how its definition provides a reference point that would meaningfully alter the Petition’s assertions of obviousness. We do not discern a meaningful difference between the definition of a person of ordinary skill in the art encompassing an electrical engineering degree or a physics degree with several years of experience in magnetic sensors and MRI. For purposes of this decision, we analyze the asserted prior art with respect to the level of skill set forth by Petitioner, but there would be no difference in the outcome of this Decision if we were to substitute a physicist for an electrical engineer as suggested by Patent Owner.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“According to the specification of the ’128 patent, “the residual magnetic field [is the field] that exists in the vicinity of an MRI apparatus.” Ex. 1001, 2:55–57. The residual lines of magnetic force of the magnet in the MRI apparatus pass through the access opening 14 generally normal to the scan of the Hall effect sensors. The passive sensors in the series 11 and 13 are sensitive to the magnetic force lines along one axis and produce a signal related to magnetic field strength. As a ferrous object (not shown) approaches the access doorway 12, the residual magnetic field is disrupted. Id. 3:23–30. “The potential dangers associated with MRI machines include the presence, within the apparatus and surrounding area, of a strong magnetic field.” Id. 1:42–44. According to the ’128 patent, “[u]sually, the MRI device is located within a shielded room for improved results and also to lessen the impact of the device on surrounding operations.” Id. 1:54–56. Based on these disclosures in the ’128 patent, we determine that the term “residual magnetic field” refers to the magnetic field that radiates outwardly from the MRI apparatus. This is substantially similar to Petitioner’s construction which acknowledges a “non-uniform magnetic field of the MRI apparatus passing through the open doorway.” Pet. 11. In order for the residual field to pass through an open doorway it would need to radiate outwardly from the MRI apparatus. The result in this Decision, however, would be the same even if we were to accept Patent Owner’s proposed modifications to the meaning of “residual magnetic field.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“We have reviewed the parties’ contentions with respect to the “array of passive magnetic field sensors” and agree with Patent Owner that evidence in the prosecution history leading to the ’128 patent does not persuade us that all gradiometers are disavowed. Rather the prosecution history suggests that the gradiometers of Jaquet that are tuned to using the uniform magnetic field of the earth are not able to deal with the non-uniform magnetic field associated with an MRI. Based on the disclosures in the ’128 patent (Ex. 1001) and prosecution history (Ex. 1002) we find that one of ordinary skill would understand the term “array of passive magnetic field sensors” to exclude the gradiometers taught by Jaquet, but would include other gradiometers, including those based on Hall effect sensors.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“record, we determine that Petitioner has sufficiently established by a preponderance of the evidence that the combination of Votruba, Jaquet, Finn, and Seton renders the device of claim 1 obvious. Specifically, we agree with Petitioner that “a POSA would have been motivated to combine the prior art to achieve the claimed invention with a reasonable expectation of success . . . to have used the arrangement of passive magnetic sensors as taught by Jaquet in an opening of an MRI room as taught by Votruba (i.e., the array of sensors per Jaquet for the two sensors in Votruba).” Pet. 49 (citing Ex. 1003 ¶ 90). Therefore, Petitioner has shown by a preponderance of the evidence that claim 1 of the ’128 patent is unpatentable as obvious over Votruba, Jaquet, Finn, and Seton.” slip op. at 42
Patent outcomesUS 7,489,128 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,489,128 - PTAB · Dec 21, 2023 · IPR2023-01166 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claim 11 would have been obvious over Ikeda and Puthuff.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.)” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. 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)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Yet Ikeda notes that it is difficult to command the adaptive filter’s learning “depending on the situation in which the noise canceler is located.” See Ex. 1003, 3:40–54 (emphasis added). We emphasize “depending on the situation” here because it indicates that Ikeda does not necessarily criticize all outside sensors, in all situations. See id. Rather, Ikeda’s discussion of outside sensors refers to the sensors that were discussed in the background of the invention and under the specific conditions described in that section. See id. at 1:4–3:54, quoted in Prelim. Resp. 4. For example, in the part quoted by Patent Owner that allegedly teaches away, Ikeda explains that with conventional sensors “a sufficient noise canceling ability and a sufficient distortion correction characteristic are not achievable unless adequate learning sections are indicated to each adaptive filter for the learning purpose.” Id. That is, Ikeda identifies a particular type of sensor: “conventional noise cancelers.” See id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, Petitioner’s assertions are adequately supported. Pet. 31–34. The cited part of Puthuff, for instance, explains that its system improves “immunity to false triggering due to noisy environments.” Ex. 1004, 3:19–24, 6:6–10. We credit the testimony of Dr. Richard Stern, which is consistent with this teaching. Ex. 1002 ¶ 91. At this stage, the Petition sufficiently explains how Ikeda’s and Puthuff’s systems are similar and how both are concerned with solving the same problem. See Pet. 31–36.” slip op. at 13
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091 - PTAB · Dec 21, 2023 · IPR2023-01154 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claim 11 would have been obvious over Ikeda and Puthuff; it dismissed joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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 discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition, and we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Yet Ikeda notes that it is difficult to command the adaptive filter’s learning “depending on the situation in which the noise canceler is located.” See Ex. 1003, 3:40–54 (emphasis added). We emphasize “depending on the situation” here because it indicates that Ikeda does not necessarily criticize all outside sensors, in all situations. See id. Rather, Ikeda’s discussion of outside sensors refers to the sensors that were discussed in the background of the invention and under the specific conditions described in that section. See id. at 1:4–3:54, quoted in Prelim. Resp. 4. For example, in the part quoted by Patent Owner that allegedly teaches away, Ikeda explains that with conventional sensors “a sufficient noise canceling ability and a sufficient distortion correction characteristic are not achievable unless adequate learning sections are indicated to each adaptive filter for the learning purpose.” Id. That is, Ikeda identifies a particular type of sensor: “conventional noise cancelers.” See id. Also, Ikeda’s “Background of the Invention” Section provides specific discussion of a conventional noise canceler, which is shown in Figure 5, reproduced below. See id. at 1:43. In Figure 5, the conventional noise canceler has a main signal microphone 1, a reference signal microphone 2, an adaptive filter 3, a subtracter 4, and an output terminal. Id. at 1:42–46. The conventional noise canceler updates the adaptive filter’s coefficient and learns the acoustic characteristic of noise in sections where the noise signal N(z) is present and the desired signal component S(z) is absent or negligibly small. Id. at 3:32–36. Ikeda teaches using this conventional sensor to detect the absence of a desired signal component. Id. at 3:32–45. In the context of discussing this sensor, Ikeda explains that “it is, in many cases, difficult to command the adaptive filters to perform learning from the outside in accordance with the level of the desired signal and that of the noise signal, depending on the situation in which the noise canceler is located.” Id. at 3:46–50. At this stage and on this record, we preliminarily determine that the cited part of Ikeda refers to the limitations of this conventional sensor—not all outside sensors, generally. according to Petitioner, Ikeda teaches multiple alternative options for detecting the absence of a desired signal component. See Pet. 21–22. For instance, Ikeda proposes using a signal-to-noise power ratio estimator. Id. (citing Ex. 1003, 4:49–56, Fig. 1; Ex. 1002 ¶ 70). Ikeda explains that, with the estimator, the noise canceler “insures rapid convergence and allows a minimum of signal distortion to occur without resorting to a command customarily input from the outside for commanding the learning operation of filters.” Ex. 1003, 9:14–18, cited in Prelim. Resp. 11. At this stage and on this record, we preliminarily determine that Ikeda at most describes an alternative that is desirable in some situations but does not criticize, discredit, or otherwise discourage modifying it to arrive at the claimed invention in a way that would indicate that Ikeda teaches away from the claimed solution. See In re Fulton, 391 F.3d 1195, 1200–01 (Fed. Cir. 2004).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. Claim Construction We need only construe terms that are in controversy. 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)). Petitioner argues that it is unnecessary to construe any terms. Pet. 13. Patent Owner agrees. Prelim. Resp. 7. 11 depends on that term’s meaning. Id. at 16–18; see infra § II.C.3.b.i. Apart from our discussion about the meaning of the recited “determination” in Section II.C.3.b.i, we do not construe any terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.) Pet. 13. In its Preliminary Response, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 7–8. In this Decision, we apply Petitioner’s proposed definition. If Patent Owner proposes a different level of ordinary skill in the art in its Response, the parties are encouraged to explain how the differences affect the obviousness analysis.” slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Dec 20, 2023 · IPR2022-01089 · APJ Barry L Grossman · IPR · Final written decision
Petitioner did not prove claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49
- Skill levelSkill level board ownOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. slip op. at 60
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision
Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41
- Skill levelSkill level board ownDecided for patent owner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - PTAB · Dec 20, 2023 · IPR2023-01069 · APJ Robert A Pollock · IPR · Institution
The Board instituted review of claims 1–8 on all three §103 grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and accompanying evidence under 35 U.S.C. § 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We integrate the above considerations into the Advanced Bionics two- part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 58
- Other 314aDenied
“Patent Owner points to § 314(a)27 as a basis for denying institution but provides no substantive argument or evidence on this point. See Prelim. Resp. 2 (citation), 4 (citation), 15 (section heading), 31 (citation in parenthetical). At best, Patent Owner asserts that if we find “that fewer than all three Grounds meet the standard for Section 325(d), institution of Samsung’s petition should still be denied in full, because institution on all three Grounds ‘would not be an efficient use of the Board’s time and 27 Under certain circumstances, the Board may apply its discretion under § 314(a) to deny institution in light of a parallel district court proceeding involving the same patent. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). But as noted by Petitioner, the patent at issue here “has never been asserted in any litigation.” Pet. 63. 66 resources.’” Prelim. Resp. 31 (citing Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative)). Because we decline to exercise our discretion with respect to any of the Grounds under § 325(d), the Board’s Deeper decision is inapposite.” slip op. at 66
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not presently dispute this definition “except to clarify that the POSA would have at least two years of experience in engineering monoclonal antibodies for human therapeutic use, either in the laboratory or industry.” Prelim. Resp. 44–48 (emphasis omitted); see also id. at 48–49 (arguing that Petitioner cannot prove unpatentability of the challenged claims under either party’s definition). At this stage in the proceeding, we accept and apply Petitioner’s proposed definition of the skilled artisan, as being both unopposed by Patent Owner and inclusive of Patent Owner’s additional qualification. In this respect, it appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” encompasses Patent Owner’s proposed modification, and is consistent with the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,590,189 - PTAB · Dec 19, 2023 · IPR2023-01062 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 27–33 on all asserted grounds after 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
“To institute an 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 demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’095 patent. Thus, we institute an inter partes review of all challenged claims of the ’095 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that a “person of ordinary skill in the art of the ’095 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of 7 At this stage of the proceeding, Patent Owner has not offered any evidence of secondary considerations. See generally Prelim. Resp. testing of twisted-pair data cables.” Pet. 11 (citing Ex. 1007 ¶ 13). 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 ¶ 13). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes express constructions for “data communications cable,” “dielectric pair separator,” “substantially flat,” “configurable,” and grooves.” Pet. 12–18. Patent Owner proposes an express construction of “twisted pairs” of insulated conductors. Prelim. Resp. 10–17. As explained below, on the present record, we provide a preliminary construction of the “dielectric pair separator,” “substantially flat,” configurable,” “grooves,” and “twisted pairs” and determine that we need not expressly construe any other claim term at this stage of the proceeding. 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). 1. Preamble The preambles of claims 27 and 31 recite a “data communications cable comprising.” Petitioner asserts that the preambles merely states an intended purpose and are not limiting. Pet. 12. We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “dielectric pair separator” Petitioner asserts that the ordinary and customary meaning of a “dielectric pair separator” in view of the intrinsic record is a separator that serves as a dielectric medium and that the term does not require that the separator consist entirely of dielectric material. Pet. 12 (citing Ex. 1007 ¶ 74; Ex. 1001, claim 24 (requiring that the dielectric pair separator have Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely that a dielectric pair separator is “a separator that serves as a dielectric medium” and there is no requirement that the separator consist entirely of dielectric material. 3. “substantially flat” Claim 27 recites “the configurable dielectric pair separator being substantially flat.” Claim 31 requires that the “configurable dielectric pair separator include[e] a substantially flat dielectric tape.” Petitioner asserts that the ordinary and customary meaning of a substantially flat separator is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat in the finished cable. Pet. 13 (citing Ex. 1007 ¶ 76; Ex. 1001, 6:12–25). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination of the related Patent No. 6,998,537 (“the ’537 patent”) and by the district court. Pet. 13–15 (citing Ex. 1001, 6:12–2, Figs. 5–11, 13; Ex. 1006, 10–11; Ex. 1007 ¶¶ 77–80; Ex. 1052, 3–4). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly, and that the term does not require that the separator be substantially flat in the finished cable. 4. “configurable” Independent claims 27 and 31 both recite a “configurable dielectric pair separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible (citing Ex. 1007 ¶ 81). Petitioner further asserts that this construction is consistent with the construction adopted by the district court. Id. (citing Ex. 1052, 1–2 Ex. 1007 ¶¶ 81– 84). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.” 5. “grooves” Petitioner states that, for the purposes of this proceeding, Petitioner adopts the definition provided by the district court in prior litigation: “Regions within a cable that are substantially physically separated from other regions with[in] the cable by a pair separator; i.e., they are formed by, but need not be part of, the separator.” Pet. 18 (citing Ex. 1052, 3). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that grooves are regions within a cable that are substantially physically separated from other regions within the cable by a pair separator.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,570,095
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.