Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

IPR2024-00952 	Paper 12
Patent 8,989,952 B2 	Entered: December 13, 2024
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
CAMBRIDGE MOBILE TELEMATICS, INC.,
Petitioner,
v.
SFARA, INC.,
Patent Owner.
____________
IPR2024-00952
Patent 8,989,952 B2
____________
Before JOHN F. HORVATH, ROBERT L. KINDER, and
BRENT M. DOUGAL, Administrative Patent Judges.
Opinion for the Board filed by DOUGAL, Administrative Patent Judge.
Opinion Concurring filed by HORVATH, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. 	INTRODUCTION
A. Background and Summary
Cambridge Mobile Telematics, Inc. (“Petitioner”) filed a Petition
requesting inter partes review of claims 1–18 (“challenged claims”) of U.S.
Patent No. 8,989,952 B2 (“the ’952 patent,” Ex. 1001). Paper 2 (“Pet.”).
Sfara, Inc. (“Patent Owner”) filed a Preliminary Response to the Petition.
Paper 8 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply
(Paper 9, “Prelim. Reply”) and Patent Owner filed a Sur-reply (Paper 11,
“Prelim. Sur-reply”).
For the reasons discussed below, we determine that it is appropriate to
exercise our discretion under § 314(a) to deny the Petition.
B. Related Proceedings
Both parties identify the following related district court litigation:
Cambridge Mobile Telematics, Inc. v. Sfara, Inc., No. 3:23-cv-01368
(D.N.J.). Pet. 88; Paper 6, 1.
C. The ’952 Patent
The ’952 patent is titled “System and Method for Detecting Vehicle
Crash” and “provides an improved method and apparatus of determining, via
a communication device, whether a vehicle has crashed.” Ex. 1001, codes
(54), (57), 2:57–60. The ’952 patent explains that “[c]onventional
communication devices may detect a vehicle crash by way of monitoring a
single parameter,” but “such a conventional system may . . . result[] in a
false-positive.” Id. at 3:55–4:26.
The ’952 patent sought to decrease the likelihood of obtaining such
false positives by first having the communication device “determine[]
whether it is located in a vehicle.” Id. at 4:32–35. This in-vehicle
determination can be made “by any known method, non-limiting examples

3
of which include detecting parameters and comparing the detected
parameters with those associated with [a] vehicle.” Id. at 7:38–41. For
example, the ’952 patent explains that velocity, acceleration, and sound can
be used to determine whether the device is in a vehicle. Id. at 7:41–62.
The ’952 patent further explains that the device may use two detected
parameters to determine whether a crash has occurred. Id. at 3:35–40. For
example, “non-limiting examples . . . include velocity, acceleration, geodetic
position, sound, temperature, vibrations, pressure, contents of surrounding
atmosphere and combinations thereof.” Id. at 6:51–58. The patent states that
“[t]he detection of at least two parameters further decreases the number of
false-positive vehicle crash detections.” Id. at 4:41–42.
D. Illustrative Claim
Of the challenged claims, 1, 7, and 13 are independent. Claim 1,
reproduced below, is illustrative.
1. A device for use with a vehicle, said device comprising:
a mode-determining component operable to detect whether
the device is in the vehicle and to generate an in-vehicle signal;
a 	first detecting component operable [to] detect a first
parameter and to generate a first detector signal based on the first
detected parameter; and
a second detecting component operable [to] detect a second
parameter and to generate a second detector signal based on the
second detected parameter;
wherein 	said 	mode-determining 	component 	is 	further
operable to generate a crash mode signal based on the in-vehicle
signal, the first detector signal and the second detector signal.
Ex. 1001, 16:64–17:10.
The method of claim 7 is similar in scope to claim 1. Id. at 17:54–
18:3. The “non-transitory, computer-readable media” of claim 13 includes
features substantially similar to claim 1, and also includes “operating an

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operating component in a first mode” and “switching operation of the
operating component from the first mode to a second mode based on the
crash mode signal.” Id. at 18:45–67.
Petitioner treats claims 7 and 13’s “detecting” and “generating” via a
“mode determining component” the same as claim 1’s “mode-determining
component operable to detect whether the device is in the vehicle and to
generate an in-vehicle signal.” See Pet. 15, 36, 38. Likewise, Petitioner
equates the “detecting” and “generating” via a “[first/second] detecting
component” of claims 7 and 13 as having the same scope as claim 1’s “a
first[/second] detecting component operable [to] detect a first[/second]
parameter and to generate a first[/second] detector signal based on the
first[/second] detected parameter.” Id. at 20, 36, 38.
E. Evidence
Petitioner relies on the following references:
Name 	Reference 	Exhibit(s)
Green 	US 9,390,625 B2 (July 12, 2016) 	1005
Wright 	US 9,311,271 B2 (Apr. 12, 2016) 	1004
Petitioner also relies on the declaration of Lin Zhong, Ph.D.
(Ex. 1002) in support of its arguments.

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F. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claim(s) Challenged 	35 U.S.C. § 	Reference(s)/Basis
1–18 	103 	Green
1–18 	103 	Wright, Green
II. ANALYSIS
A. Principle of Law
Petitioner bears the burden of persuasion to prove unpatentability of
the claims challenged in the Petition. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A “petition must set
forth,” inter alia, “a statement of the precise relief requested for each claim
challenged,” identifying “[t]he specific statutory grounds,” and “[h]ow the
challenged claim is be construed.” 37 C.F.R. § 42.104.
B. Claim Construction and 37 C.F.R. § 42.104(b)(3)
We apply the same claim construction standard used in district court
actions under 35 U.S.C. § 282(b), including construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. 37 C.F.R. § 42.100(b). Our rules also require that a
petition set forth “[h]ow the challenged claim is to be construed” as follows:
Where the claim to be construed contains a means-plus-function
. 	. . 	limitation as 	permitted under 35 	U.S.C. 112(f), the
construction of the claim must identify the specific portions of

6
the specification that describe the structure, material, or acts
corresponding to each claimed function.
37 C.F.R. § 42.104(b)(3). As the Board recently explained:
The Consolidated Trial Practice Guide[1, 2] (“CTPG”) . . . instructs
that “[w]here claim language may be construed according to 35
U.S.C. § 112(f), a petitioner must provide a construction.” CTPG
45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The
CTPG advises that a party “may choose to elaborate why
§ 112(f) should or should not apply to the limitation at issue.” Id.
Notably, the CTPG warns that “[a] petitioner who chooses not to
address construction under § 112(f) risks failing to satisfy the
requirement of 37 C.F.R. § 42.104(b)(3).” Id.
10x Genomics, Inc. v. Pres. and Fellows of Harvard Coll., IPR2023-01299,
Paper 15 at 2, 8 (PTAB Mar. 14, 2024) (denying institution under 37 C.F.R.
§ 42.104(b)(3)).
In the district court litigation, Petitioner’s position is that “the
‘component’ terms [3] in the Challenged Claims should be means-plus-
function terms governed by §112(f) and that such terms are indefinite for
failure to identify corresponding structure to perform the recited functions.”
Pet. 7 n.3 (citing Ex. 1008, 9–16, 21–23, 26–37). Petitioner explains that
Patent Owner’s position, in the litigation, is “that Petitioner infringes the
’952 patent according to the plain and ordinary meaning of the ‘component’
terms.” Id.
1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
2 Though not part of our rules in 37 C.F.R., the CTPG “is intended to advise
the public on the general framework of the rules, including the structure and
times for taking action in each of the AIA proceedings” and to “encourage[]
consistency of procedures among panels of the Board.” CTPG, 1, 3.
3 For example, in claim 1, the terms “a mode-determining component . . .,”
“a first detecting component . . .,” and “a second detecting component . . ..”

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In this proceeding, Petitioner argues that “[t]he Board need not
expressly construe any term” and that “Petitioner applies the plain and
ordinary meaning to the claim terms” consistent with Patent Owner’s
litigation position. Id. at 6–7. Thus, Petitioner does not provide any express
construction of the “component” terms, based on means-plus-function, or
otherwise.
Patent Owner responds that, though it “proposed a ‘plain and ordinary
meaning’ construction of the “component” terms in the litigation, [it] has
also provided its own means-plus-function construction as an alternative.
Prelim. Resp. 12 (citing Ex. 1008, 9–37). Patent Owner argues that
Petitioner should have addressed whether the “component” terms are means-
plus-function limitations and that Petitioner’s failure to do so renders the
Petition deficient under 37 C.F.R. § 42.104(b)(3). Id. at 10. Thus, Patent
Owner argues, institution should be denied. Id. (citing Orthopediatrics Corp.
v. K2M, Inc., IPR2018-01546, Paper 10 (PTAB Feb. 14, 2019) (denying
institution under 37 C.F.R. § 42.104(b)(3)); 10x Genomics, Inc., IPR2023-
01299, Paper 15). We agree.
In the litigation, Petitioner emphasized the importance of resolving
whether the “component” terms are means-plus-function terms, stating:
construction of 	the listed “component” terms—specifically,
whether those terms are means-plus-function limitations
governed by 	35 	U.S.C. § 	112(f), and if 	so, whether the
specification properly discloses corresponding structure for the
recited function in those limitations—will be most significant to
the resolution of 	the case 	and/or will 	be 	case or 	claim
dispositive or substantially conducive to promoting settlement.
Ex. 1008, 2 (Joint Claim Construction and Prehearing Statement) (emphasis
added); see also Prelim. Resp. 12.

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In so doing, Petitioner clearly and emphatically stated that whether the
“component” terms are means-plus-function limitations is a dispositive issue
for the litigation. Thus, Petitioner has indicated that it believes that the
claims contain a means-plus-function limitation, thereby implicating 37
C.F.R. § 42.104(b)(3). In the present case however, Petitioner does not
address the issue. Rather, Petitioner merely provides a footnote to state its
litigation position.
Even though Patent Owner argued for the plain and ordinary meaning
of the “component” terms in the litigation, it also set forth an alternative
means-plus-function claim construction position. Thus, both parties
previously indicated the importance of considering whether the
“component” terms are means-plus-function limitations, further implicating
the applicability of 37 C.F.R. § 42.104(b)(3).
Under these facts we determine that 37 C.F.R. § 42.104(b)(3)
mandates that the Petition “identify the specific portions of the specification
that describe the structure, material, or acts corresponding to each claimed
function.” The Petition failed to do so. At a minimum, the Petition should
have explained why the plain and ordinary meaning of the “component”
terms should apply in this proceeding (why the inconsistent positions are
warranted) or set forth an alternative means-plus-function claim
construction. CTPG 45.
As a clarification, our rules do not necessarily prohibit petitioners
from taking inconsistent claim construction positions before the Board and a
district court. See 10x Genomics, Inc. v. Bio-Rad Lab’ys, Inc., IPR2020-
00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, here, where
Petitioner has emphasized in district court that whether the “component”
terms are means-plus-function limitations not only “will be most significant”

9
but, “will be case . . . dispositive” and both parties previously provided the
district court with competing means-plus-function claim constructions, we
determine the Petition to be deficient under our rules.4
III.CONCLUSION
For the foregoing reasons, we determine that the Petition fails to
satisfy the requirements of 37 C.F.R. § 42.104(b)(3). Accordingly, we
decline to institute an inter partes review.
IV.ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is
denied and no inter partes review is instituted.
4 We further decline to provide a claim construction of the “component”
terms which are not briefed by either party in this proceeding.

IPR2024-00952 	Paper 12
Patent 8,989,952 B2 	Entered: December 13, 2024
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
CAMBRIDGE MOBILE TELEMATICS, INC.,
Petitioner,
v.
SFARA, INC.,
Patent Owner.
IPR2024-00952
Patent 8,989,952 B2
HORVATH, Administrative Patent Judge, Concurring.
I. 	CONCURRENCE
I concur with the Majority’s decision to deny the Petition, but would
deny the Petition for a different reason.
A. Discretionary Denial Under 35 U.S.C. § 314(a)
Unlike the Majority, I would not discretionarily deny the Petition for
Petitioner’s alleged failure to construe the claims or to explain why the
claims are not means-plus-function claims. Although 37 C.F.R.
§ 42.104(b)(3) (“rule 104(b)(3)”) requires a petitioner to state “[h]ow the
challenged claim is to be construed,” a failure to do so does not require

2
denying a petition. For example, the CTPG states that “[a] petitioner who
chooses not to address construction under § 112(f) risks failing to satisfy the
requirement of 37 C.F.R. § 42.104(b)(3).” CTPG at 45 (emphasis added).
But risking failure is not failing, and neither rule 104(b)(3) nor the CTPG
mandate that a petition must fail when a petitioner fails to satisfy rule
104(b)(3). Indeed, our rules allow us to “waive or suspend a requirement of
parts 1, 41, and 42,” including rule 104(b)(3), further establishing that a
petition need not fail or be denied for failing to comply with the rule.
37 C.F.R. § 42.5(b).
Moreover, Petitioner arguably has satisfied rule 104(b)(3) because
Petitioner has stated “[h]ow the challenged claim is to be construed,”
namely, by giving all terms their plain and ordinary meaning. Pet. 5.
Although Petitioner argued differently in district court, rule 104(b)(3) does
not require Petitioner to construe the claims consistently here and in district
court. See Samsung Elecs. Co., Ltd v. Cellect, LLC, IPR2020-00476, Paper
14 at 12 (PTAB July 31, 2020) (“It is not a requirement of [rule] 104(b)(3)
that for every term for which Petitioner has proposed an express construction
in related district court litigation, Petitioner must propose the same
construction in the Petition.”).
I would also not deny the Petition because it failed to explain why the
challenged claims are not “means-plus-function” claims or, if they are, to
identify structure corresponding to the recited functions. Rule 104(b)(3)
only requires a petition to identify corresponding structure “[w]here the
claim to be construed contains a means-plus-function or step-plus-function
limitation.” But deciding whether a claim contains a mean-plus-function
limitation is an issue for the Board to decide, not the petitioner. See
Markman v. Westview Instr., Inc., 517 U.S. 370, 391 (1996) (claim

3
“interpretation . . . is an issue for the judge”); Kemco Sales, Inc. v. Control
Papers Co., Inc., 208 F.3d 1352, 1360 (Fed. Cir. 2000) (“Whether the
language of a claim is to be interpreted according to 35 U.S.C. § 112, ¶ 6,1
i.e., whether a claim limitation is in means-plus-function format, is a matter
of claim construction and is thus a question of law.”); Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015) (“Regarding questions of
claim construction, including whether claim language invokes 35 U.S.C. §
112, para. 6, the district court’s determinations . . . are legal questions that
we review de novo.”).
B. Claim Construction
In inter partes reviews, we construe the claims “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) (2023). A patentee
may recite a limitation in a claim for a combination as “a means or step for
performing a specified function without the recital of structure, material, or
acts in support thereof.” 35 U.S.C. § 112, ¶ 6. “[U]se of the word ‘means’
in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies.”
Williamson, 792 F.3d at 1348. “Nonetheless, mere incantation of the word
‘means’ in a clause reciting predominantly structure cannot evoke § 112
¶ 6.” York Prods., Inc. v. Cent. Tractor Farm & Fam. Ctr., 99 F.3d 1568,
1574 (Fed. Cir. 1996). Conversely, “the failure to use the word ‘means’ [in
a claim element] also creates a rebuttable presumption—this time that § 112
¶ 6 does not apply.” Williamson, 792 F.3d at 1348. However, this
1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
285–88 (2011), revised 35 U.S.C. § 112. 35 U.S.C. § 112(f) is identical in
content to 112, ¶ 6.

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presumption can also be overcome if the claim element fails to recite
sufficiently definite structure for performing a recited function. Id. at 1349.
Significantly, a claim element that is otherwise written in purely functional
terms does not recite sufficiently definite structure if it only recites generic
or coined terms that lack a clear meaning. Id. at 1350 (“Generic terms such
as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words . . . may be used
in a claim in a manner that is tantamount to using the word ‘means’ because
they ‘typically do not connote sufficiently definite structure.’”).
“Construing a means-plus-function claim term is a two-step process.
The court must first identify the claimed function. Then, the court must
determine what structure, if any, disclosed in the specification corresponds
to the claimed function.” Id. at 1351 (internal citation omitted). “[S]tructure
disclosed in the specification is ‘corresponding’ structure only if the
specification or prosecution history clearly links or associates that structure
to the function recited in the claim.” B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419, 1424 (Fed. Cir. 1997) (citation omitted). If the
corresponding structure is a processor executing computer software, the
specification must disclose and clearly link the recited function to “[an]
algorithm that transforms [a] general purpose microprocessor into a ‘special
purpose computer programmed to perform the disclosed algorithm.’”
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338
(Fed. Cir. 2008).
Claims 1, 7, and 13 recite various “components” for performing
various functions. Ex. 1001, 16:64–17:10, 17:54–18:3, 18:45–67. For
example, claim 1 recites “a first detecting component operable [to] detect a
first parameter . . .” and other functions. Id. at 17:1–3. Claim 7 recites
“detecting, via a first detecting component, a first parameter.” Id. at 17:60.

5
Claim 13 recites a computer readable medium having computer-readable
instructions that, when executed by a computer, cause the computer to
perform a method that includes “detecting, via a first detecting component, a
first parameter.” Id. at 18:54.
The term “first detecting component” is a nonce-word that does not
connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying
words such as “mechanism,” “element,” “device,” and others as verbal
constructs that do not connote sufficiently definite structures). Indeed, the
Specification discloses all of the “components” recited in claims 1, 7, and
13, including the “first detecting component,” can be “implemented as a
computer having tangible computer-readable media for carrying or having
computer-executable instructions or data structures stored thereon.”
Ex. 1001, 5:33–41. Thus, like the word “module,” a recognized nonce word,
each of the recited “components” is nothing more than “a generic description
for software or hardware that performs a specified function” and their
recitation “operate[s] as a substitute for ‘means’ in the context of § 112,
para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “first
detecting component” recited in claims 1, 7, and 13 as a means-plus-function
limitation whose function includes “detecting a first parameter.”2
2 I note that method steps can include means-plus-function limitations. See
Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 1006–07
(Fed. Cir. 2021) (finding “Applicants are free to invoke § 112 ¶ 6 for a claim
term nested in a method claim” and construing a “user identification
module” recited in a method claim as a means-plus-function term); Media
Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed.
Cir. 2015) (construing a “compliance mechanism” recited in a method claim
as a means-plus-function term).

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The only disclosures in the Specification that are linked to the
function of “detecting a first parameter” are (1) a “first detecting
component” (Ex. 1001, code (57), 2:64–65,), (2) a “communication device”
(id. at code (57), 4:50–53, 5:1–4, 16:47–53), (3) a “parameter-detecting
component,” which can be “a computer having tangible computer-readable
media for carrying or having computer executable instructions or data
structures stored thereon” or “any known device or system that is operable to
detect a parameter” (id. at 5:33–41, 6:53–55, 8:48–51, 9:15–16, 15:13–14,
16:30–39, Fig. 4), (4) various “detecting components 402–408” within the
“parameter-detecting component,” which can have the same computer
structure as the “parameter-detecting component” or can be a “known
detecting component that is able to detect a known parameter” (id. at 9:15–
36, 9:49–50, 10:17–19, 12:45–47, Fig. 4), (5) a “field-detecting component,”
which can have the same computer structure as the “parameter-detecting
component” or can be “any known device or system that is operable to
detect a field” (id. at 5:33–41, 6:11–13, 8:13–15, 8:48–51, 9:6–7, 10:26–27,
14:46–48, 16:30–39), and (6) a “device 202” that includes the “parameter-
detecting component” and/or a “field-detecting component” (id. at 5:16–41,
7:37–41, Fig. 2). None of these disclosures reveal a sufficiently cognizable
structure that performs the recited function of “detecting a first parameter.”
The “first detecting component,” “communication device,”
“parameter-detecting component,” “detecting components 402–408,” “field-
detecting component,” and “device 202” are not cognizable structures
because they reveal little more than the same black-box structure—a “first
detecting component”—recited in the claims. The computer implementing
the functionality of the “parameter-detecting component,” “field-detecting
component,” or “detecting components” is not a cognizable structure

7
because the Specification fails to describe an algorithm that would transform
the computer into a “special purpose computer programmed to perform” the
recited function of “detecting a first parameter.” Aristocrat, 521 F.3d at
1338. Any “known device or system” that is operable to “detect a
parameter” or “detect a field” is not a cognizable structure because the terms
“device” and “system,” like the term “component,” are simply nonce words
that fail to connote a sufficiently definite structure.
To avail oneself of the privilege of reciting a means-plus-function
limitation, one must disclose a cognizable structure in the Specification that
is clearly linked to and performs the recited function. See Atmel Corp. v.
Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999) (finding
§ 112 ¶ 6 “sets forth a simple requirement, a quid pro quo, in order to utilize
a generic means expression,” and further reasoning that “[a]ll one needs to
do . . . is to recite some structure corresponding to the means in the
specification . . . so that one can readily ascertain what the claim means”);
see also Med. Instr. and Diag. Corp. v. Electa AB, 344 F.3d 1205, 1211
(Fed. Cir. 2003) (finding “[i]f the specification is not clear as to the structure
that the patentee intends to correspond to the claimed function, then the
patentee has not paid th[e] price” for using means-plus-function claiming).
Accordingly, for the reasons discussed above, I would find all claim
limitations reciting the “first detecting component” are written in means-
plus-function form and the Specification fails to discloses a cognizable
structure corresponding to and performing its recited function of “detecting a
first parameter.”
C. Analysis of Petitioner’s Contentions
Petitioner contends claims 1–18 are unpatentable over Green alone or
in combination with Wright. Pet. 9–85. Patent Owner does not dispute

8
these contentions. Prelim. Resp. 10–33. Instead, Patent Owner argues we
should discretionarily deny the Petition under Fintiv or because Petitioner
has failed to construe the claims. Id. I would not decline the Petition for
failure to construe the claims for the reasons discussed above. I need not
decide whether to deny the Petition under Fintiv for the following reason.
To consider the merits of Petitioner’s unpatentability challenges, one
must undertake a two-step process that requires “construing the claim[s], a
question of law for the court, followed by . . . a comparison of the construed
claim[s] to the prior art.” Key Pharms. v. Hercon Labs. Corp., 161 F.3d
709, 714 (Fed. Cir. 1998). For means-plus-function limitations, the asserted
“prior art must disclose not simply a means for achieving the desired
function, but rather the particular structure recited in the written description
corresponding to that function, or an equivalent thereof.” McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1361 (Fed. Cir. 2001). Thus, “a
challenger who seeks to demonstrate that a means-plus-function limitation
was present in the prior art must prove that the corresponding structure—or
an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter
Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009).
As discussed above, all of the challenged claims recite a “first
detecting component” limitation that is written in means-plus-function
format, but the Specification fails to disclose a sufficiently definite
corresponding structure that performs its function of “detecting a first
parameter.” Thus, I am unable to determine what specific prior art structure
is needed to meet the limitation. Fresenius, 582 F.3d at 1299. Accordingly,
I am unable to determine the merits of the Petition, and would deny the
Petition for this reason. See Samsung Elecs. Am., Inc. v. Prisua Engin.
Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (“[T]he proper course for the

9
Board to follow, if it cannot ascertain the scope of a claim with reasonable
certainty for purposes of assessing patentability, is to decline to institute the
IPR.”).

IPR2024-00952 	Paper 12
Patent 8,989,952 B2 	Entered: December 13, 2024
PETITIONER:
Linnea Cipriano
Douglas Kline
Andrew Ong
GOODWIN PROCTER LLP
lcipriano@goodwinlaw.com
dkline@goodwinlaw.com
aong@goodwinlaw.com
PATENT OWNER:
James Klaiber
KLAIBER IP LAW LLC
jklaiber@klaiberip.com
Tedd Van Buskirk
Richard Juang
Chandran Iyer
Scott Samay
DAIGNAULT IYER LLP
tvanbuskirk@daignaultiyer.com
richard.juang@gmail.com
cbiyer@daignaultiyer.com
ssamay@daignaultiyer.com