- PTAB · Dec 28, 2021 · IPR2021-01195 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 6, 7, 11, and 12, finding a reasonable likelihood that the Batchelder-based obviousness grounds would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Under the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp., when no time-bar or estoppel would apply once determining Petitioner did not name all RPIs, the Board need not address the issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); see also Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (“[O]ur jurisdiction to consider a petition does not require a ‘correct’ identification of all RPIs in a petition.”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the ’354 patent, the overlap in the asserted prior art, and our prior determination of unpatentability regarding the ’354 patent, we conclude that the merits of Petitioner’s case in this proceeding are substantively strong. Thus, this factor weighs strongly in favor of institution. 7. Holistic assessment of factors and conclusion We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In weighing the totality of the evidence, we decide not to exercise discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–26). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construe claim terms “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). The parties stipulated to constructions of “reservoir” and “chamber” in the district-court litigation. Ex. 1005, 2. Petitioner proposes additional constructions for “impeller” and “radiator.” Pet. 8–10. Patent Owner does not dispute those constructions. See generally Prelim. Resp. Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that none of the claim terms identified by the parties require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim constructionDiscretionary denialPatents in suitUS 10,613,601 - PTAB · Dec 23, 2021 · IPR2021-01064 · APJ Jason W Melvin · IPR · Institution
Instituted inter partes review of claims 1, 14, 17, 18, 21, 22, and 24 on all four asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In our view, Petitioner correctly emphasizes Fintiv’s language noting that the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. Indeed, in multiple decisions Patent Owner cites for support, the Board determined that instituting review would require resolving issues that would also have been resolved by a district court. E.g., Fitbit, Inc. v. Philips N. Am. LLC, IPR2020-00828, Paper 13, 15–16 (considering the patent owner’s litigation with a non-petitioning party that would overlap with the inter partes review at issue); Mylan Labs. Ltd. v. Janssen Pharmaceutica N.V., IPR2020-00440, Paper 17, 19–23 (same, and additionally considering litigation involving the petitioner). Here, because the Intel litigation did not resolve issues presented by this proceeding, there is no chance of an inconsistent outcome. Indeed, “redoing the work of another tribunal” would only arise when that tribunal has resolved a dispute at issue before the Board. Patent Owner has not argued that resolving a dispute in this proceeding would conflict with an aspect of the Intel litigation. Thus, we do not agree with Patent Owner that, because “the [litigation] parties and the District Court invested enormous amounts of time and money litigating validity and infringement issues relating to the ’759 patent,” instituting review here would mean redoing the work of another tribunal. Prelim. Resp. 17.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11, 9 (Apr. 2, 2019). In Valve, however, the petitioner and the prior petitioner were co-defendants accused of infringement based on the same product. Id. at 9–10. Patent Owner argues that the Board has found a relationship between petitioners when one uses substantive challenges from an earlier petition. Prelim. Resp. 21 (citing Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550, Paper 8, 12). Ericsson imposed a relationship in light of the derivative nature of the petition at issue. Ericsson, IPR2019-01550, Paper 8, 12. That decision, however, has not been designated as precedential or informative by the Board, and other decisions have determined that factor 1 weights against discretionary denial for an independent petitioner. E.g., United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (determining that petitioner independence weighed against discretionary denial, but that substantive similarity with an unrelated prior petition meant the factor only moderately weighed against discretionary denial). We determine that factor 1 weighs somewhat against discretionary denial because Petitioner has not filed a prior petition, but did copy its substantive grounds from a prior petition. That the Board has not substantively addressed the merits of the prior petitions, in our view, weighs against discretionary denial, because that approach best balances the desires to improve patent quality and patent-system efficiency against the potential for abuse of the review process by repeated attacks on patents. See General Plastic, IPR2016-01357, Paper 19, 16–17. We view substantive consideration as an important factor in that balance, because to determine otherwise would asymmetrically insulate patent owners from potential abuse without addressing the desire to improve patent quality. Patent Owner suffers no abuse from having this tribunal consider the merits of these grounds for the first time.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Federal Circuit held that “the Patent Office, when applying § 325(d), cannot deny institution of IPR based on abusive filing practices then grant a nearly identical reexamination request that is even more abusive.” Vivint, 14 F.4th at 1354. It found important that, when the Board denied Alarm.com’s IPR petition, the Board considered Alarm.com’s earlier petitions and reasoned that “allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress's intent in enacting the [AIA].” Id. at 1353 (quoting IPR2016-01091, Paper 11, 12) (alteration in original) (emphasis omitted). The facts here are not remotely similar. The Intel IPRs were not denied for abusive filing practices, but rather were denied to avoid overlap with a parallel district-court litigation. See IPR2020-00106, Paper 17, 4–13; IPR2020-00498, Paper 16, 4–10. This proceeding involves a different petitioner, which has not before petitioned for review of the ’759 patent. Those facts show that this Decision does not involve potentially abusive filing practices by the same challenger, as was at issue in Vivint. Patent Owner has not identified how instituting review would be inconsistent with a prior decision on this patent. As explained above, because the invalidity issues presented at trial were different from those considered in the prior application of Fintiv, we reach a different conclusion under that doctrine based on different facts here. Thus, Vivint is not germane to our decision.” slip op. at 14
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,725,759 - PTAB · Dec 21, 2021 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 based on a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) (see Pet. 85–86) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 95–97; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’837 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;5 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. We apply this level of skill in the present case.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioners assert 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 [at] prosecution history.” Id. at 5–6 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). We adopt the claim constructions determinations in IPR2019-01568 provided in the table below.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,894,837 - PTAB · Dec 21, 2021 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 22, 23, and 31–40 because Petitioners showed a reasonable likelihood of prevailing on the asserted § 103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 84–86; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’870 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 22, 23, and 31–40 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims. Our determination in this Decision is not a final determination on either the patentability of any challenged claims or the construction of any claim term and, thus, leaves undecided any remaining fact issues necessary to determine whether sufficient evidence supports Petitioners’ contentions by a preponderance of the evidence in the final written decision. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”) (quoting 35 U.S.C. § 314(a) and comparing id. § 316(e)).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 9 n.3; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 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 IPR at 8. We apply this level of skill in the present case.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 6–7. We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - PTAB · Dec 21, 2021 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted inter partes review of claims 2–4, 11–14, 22, 23, and 31–33 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 87–90; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf) (explaining” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 2–4, 11–14, 22, 23, and 31–33 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 4 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 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 IPR at 8. 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)Prior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 3–4. Petitioners argue 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 4 (citing Ex. 1003 ¶ 69; 37 C.F.R. §42.100(b)). We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - PTAB · Dec 21, 2021 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 1, 5–10, 17–19, and 36–40, finding a reasonable likelihood that the asserted combinations would render the challenged claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) (see Pet. 85–86) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 84–86; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’870 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 7 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 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 IPR at 8. We apply this level of skill in the present case.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 5–10, 17–19, and 36–40 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - Polygroup Services N.A., Inc. v. Willis Electric Co., Ltd.Adverse judgmentPTAB · Dec 17, 2021 · IPR2021-00489 · APJ Jeffrey W Abraham · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed request for adverse judgment and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Paper 11, 1. Having reviewed Patent Owner’s unopposed request for adverse judgment, we determine that entry of judgment against Patent Owner is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). III. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner and this inter partes review is terminated pursuant to 37 C.F.R. § 42.73(b).” slip op. at 2
NonePatents in suitUS 9,671,097 - Cloudflare, Inc. v. Sable Networks, Inc.Institution deniedPTAB · Dec 16, 2021 · IPR2021-01067 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 8 would have been obvious over Beshai and Simpson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the remaining challenged claim. We hereby do not institute an inter partes review as to the challenged claim of the ’431 patent on the asserted grounds of unpatentability.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“claims 1–7 and 9 of the ’431 patent.” Prelim. Resp. 32; Ex. 2006. “[A] patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a), and that no further action is required in the Office). Based on our review of Exhibit 2006 and the Office’s public records, we conclude that claims 1–7 and 9 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), and thus, no inter partes review shall be instituted as to those claims. See 37 C.F.R. § 42.107(e) (“No” slip op. at 3
- PTAB / AIA Trials › Discretionary denialNot reached
“E. Discretionary Denial Petitioner contends the Petition should not be denied institution on discretionary grounds. Pet. 57–63; Reply. Patent Owner contends we should deny institution under 35 U.S.C. § 314(a). Prelim. Resp. 33–42; Surreply. 5 Petitioner relies on Simpson for this limitation and does not direct us to any teachings in Beshai regarding the recited “packet discard time limit.” See Pet. 10–11. institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and about 2 to 3 years of academic or professional work experience in computer networking and switching technology with a focus on routing and quality-of-service or comparable experience.” Pet. 8 (citing Ex. 1003 ¶ 55). As also asserted by Petitioner, a “higher level of education could substitute for less industry level of education.” Id. Patent Owner does not address the level of ordinary skill of the art. See Prelim. Resp. Based on our review of the current record, we adopt Petitioner’s articulation of the level of skill in the art, which is consistent with the ’431 patent and the asserted prior art, and we apply it in our obviousness evaluations below.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 6,954,431 - Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,619 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251
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.