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STMicroelectronics, Inc. v. Neodron, Ltd.

Docket IPR2021-01161, Patent Trial and Appeal Board (June 30, 2021)
Miriam Quinn, Patrick Boucher, Scott Howard, presiding
Case TypeInter Partes Review
Patent
8749251
Patent Owner Neodron, Ltd.
Petitioner STMicroelectronics, Inc.
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STMicroelectronics, Inc. v. Neodron, Ltd.

Docket IPR2021-01160, Patent Trial and Appeal Board (June 30, 2021)
Miriam Quinn, Patrick Boucher, Scott Howard, presiding
Case TypeInter Partes Review
Patent
8749251
Patent Owner Neodron, Ltd.
Petitioner STMicroelectronics, Inc.
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12 Termination Decision Post DI Settlement: TERMINATION Due to Settlement After Institution of Trial 35 USC 317a,b 37 CFR 4272, 4274

Document IPR2021-01161, No. 12 Termination Decision Post DI Settlement - TERMINATION Due to Settlement After Institution of Trial 35 USC 317a,b 37 CFR 4272, 4274 (P.T.A.B. Jan. 3, 2022)
With the Board’s prior authorization, Petitioner STMicroelectronics, Inc. and Patent Owner Neodron Ltd. (collectively “the Parties”) filed, in each of the above-identified proceedings, a Joint Motion to Terminate Inter Partes Review.
The Motion further states: “a true copy of the settlement agreement that resolves the disputes in the above-captioned inter partes review relating to the Patent- in-Suit is filed herewith as an exhibit,” and “[t]here are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination sought.” Id. at 1–2.
The Motion further states that “[t]he parties jointly request that the Board terminate this inter partes review of the Patent-in-Suit, in its entirety.” Id. at 2; see also id. at 1 (“the parties jointly request termination of the inter partes review of U.S. Patent No. 8,749,251 (‘Patent-in-Suit’).”).
2 For purposes of expediency, we cite to papers and exhibits filed in IPR2021-01160, unless otherwise noted.
Thus, we determine that good cause exists to treat the Settlement Agreement (Ex. 2002) between the Parties as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to keep it separate from the files of the involved patent and associated preliminary proceeding, and to limit its availability as requested by the Parties.
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11 Termination Decision Post DI Settlement: TERMINATION Due to Settlement After Institution of Trial 35 USC 317a,b 37 CFR 4272, 4274

Document IPR2021-01160, No. 11 Termination Decision Post DI Settlement - TERMINATION Due to Settlement After Institution of Trial 35 USC 317a,b 37 CFR 4272, 4274 (P.T.A.B. Jan. 3, 2022)
With the Board’s prior authorization, Petitioner STMicroelectronics, Inc. and Patent Owner Neodron Ltd. (collectively “the Parties”) filed, in each of the above-identified proceedings, a Joint Motion to Terminate Inter Partes Review.
The Motion further states: “a true copy of the settlement agreement that resolves the disputes in the above-captioned inter partes review relating to the Patent- in-Suit is filed herewith as an exhibit,” and “[t]here are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination sought.” Id. at 1–2.
The Motion further states that “[t]he parties jointly request that the Board terminate this inter partes review of the Patent-in-Suit, in its entirety.” Id. at 2; see also id. at 1 (“the parties jointly request termination of the inter partes review of U.S. Patent No. 8,749,251 (‘Patent-in-Suit’).”).
2 For purposes of expediency, we cite to papers and exhibits filed in IPR2021-01160, unless otherwise noted.
Thus, we determine that good cause exists to treat the Settlement Agreement (Ex. 2002) between the Parties as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to keep it separate from the files of the involved patent and associated preliminary proceeding, and to limit its availability as requested by the Parties.
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7 Institution Decision Grant: Institution Decision Grant

Document IPR2021-01161, No. 7 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Dec. 15, 2021)
“While the sequence of these questions might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly emphasized that “it is error to reach a conclusion of obviousness until all those factors are considered,” WBIP, LLC v. Kohler, 829 F.3d 1317, 1328 (Fed. Cir. 2016).
case, and one or more of these or other factors may predominate in a particular case.” Id. Petitioner argues that a person having ordinary skill in the art at the time of the invention 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.
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 present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references.
Petitioner further argues that a person having ordinary skill in the art “would have understood that the disclosed control circuit [in Philipp] executes logic in accordance with firmware or software stored on internal memory to effectuate the functions discussed.” Id. at 36– 37 (citing Ex. 1003 ¶¶ 97–103).
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8 Order Other: Order SCHEDULING ORDER

Document IPR2021-01161, No. 8 Order Other - Order SCHEDULING ORDER (P.T.A.B. Dec. 15, 2021)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
under the America Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also Consolidated Practice Guide at 67.
Unless the Board notifies the parties otherwise, oral argument, if requested, will be held at the Denver, Colorado, USPTO Regional Office.
The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.
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7 Institution Decision Grant: Institution Decision Grant

Document IPR2021-01160, No. 7 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Dec. 15, 2021)
“While the sequence of these questions might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly emphasized that “it is error to reach a conclusion of obviousness until all those factors are considered,” WBIP, LLC v. Kohler, 829 F.3d 1317, 1328 (Fed. Cir. 2016).
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.
In deciding whether to institute inter partes review, we consider the guidance in the Consolidated Trial Practice Guide, which sets forth the following: Parallel Petitions Challenging the Same Patent.
According to Koziuk, “reducing power consumption in portable computers has gained a great deal of attention in the technical community as a result of a set of conflicting user requirements and technological constraints.” Ex. 1013, 1:60–63.
Petitioner argues that to the extent the preamble is limiting, Koziuk teaches “an apparatus comprising a digitizing panel and a controller.” Pet. 20 (citing Ex. 1013, 2:11–25).9 Claim 1 further recites “a sensing element of a touch screen.” Ex. 1001, 17:45.
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8 Order Other: Order SCHEDULING ORDER

Document IPR2021-01160, No. 8 Order Other - Order SCHEDULING ORDER (P.T.A.B. Dec. 15, 2021)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
under the America Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also Consolidated Practice Guide at 67.
Unless the Board notifies the parties otherwise, oral argument, if requested, will be held at the Denver, Colorado, USPTO Regional Office.
The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.
cite Cite Document
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