- Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01247 · APJ Donald E Daybell · IPR · Institution
Institution was denied: claims 1–16 lacked a reasonable likelihood of success, and the Board declined to reach claims 17–18 because reviewing only two potentially viable claims would be inefficient.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’492 Patent “had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks. More education can supplement practical experience and vice versa.” Pet. 5 (citation omitted). Patent Owner does not dispute Petitioner’s assertion. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In view of the parties’ agreement to adopt Patent Owner’s construction and the District Court’s persuasive analysis, we find that the “multi-user detector decision unit” terms in claims 1 and 10 are properly construed on the record before us to recite the functions “using decision criteria to determine a selected multi-user detector” for claim 1 and “select[ing] a multi-user detector based upon at least one threshold” for claim 10, both of which have the following corresponding structure: a MUD decision unit 220 (or, alternatively, decision logic unit 520) configured to perform one or more of the several decision algorithms (e.g., the BER/User, SINR/Symbol, Filtered SINR/Symbol, Detected Amount/Symbol, Correlation Matrix Ratio/User, Correlation Matrix Eigenvalues, Computational Complexity, Number of Bits, Number of Users, and other algorithms) disclosed at 8:12–18, 13:35–14:40, 15:3–21, 19:43– 48, 19:56–62, and 20:41–49 of the ’492 Patent.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a reasonable likelihood of success in establishing that Onggosanusi teaches or suggests these limitations. Petitioner does not rely on Egnor for these limitations. Therefore, Petitioner fails to show a reasonable likelihood of success in establishing that claims 1 and 10 would have been obvious over Onggosanusi and Egnor. Claims 2–9 and 11–16 depend from claims 1 and 10 respectively, and thus Petitioner likewise fails to show a reasonable likelihood of success that those dependent claims would have been obvious over Onggosanusi and Egnor. Therefore, we find that Petitioner fails to show a reasonable likelihood of success for Ground 1.” slip op. at 15
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). “Even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, . . . institution of review remains discretionary.” Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10 (PTAB Nov. 7, 2018) (informative) (citing SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, 815 F.3d at 1367). Where a Petition presents a reasonable likelihood of success as to only a small number of the challenged claims, the Board has the discretion to decline to institute review, because instituting a full review on all challenged claims may be an inefficient use of the Board’s limited resources. See, e.g., Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019) (informative) (denying institution where a petitioner demonstrated a reasonable likelihood of success on only two out of twenty- a petitioner demonstrated a reasonable likelihood of success on only two out of twenty claims). Of the eighteen challenged claims, we have found that Petitioner failed to establish a reasonable likelihood of success as to sixteen of those claims. This leaves a single independent claim (claim 17) and a single dependent claim (claim 18) remaining for consideration. Even were we to conclude that Petitioner had established a reasonable likelihood of success as to claims 17 and 18, this would leave at most two claims subject to a single ground upon which such a showing had been made, out of eighteen challenged claims. Based on the particular circumstances of this case, it would be inefficient for the Board to expend resources on a full review of all eighteen challenged claims, where Petitioner has failed to establish even a reasonable likelihood of success as to the vast majority of those claims. Accordingly, we need not, and do not, take any position as to Petitioner’s showing on Ground 2 but instead exercise our discretion to deny review.” slip op. at 21
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,492 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution deniedPTAB · Apr 12, 2023 · IPR2022-01561 · APJ Neil T Powell · IPR · Institution
The Board denied institution on claims 1–14 because the petition did not show a reasonable likelihood of success on the asserted obviousness grounds, and institution would be inefficient.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In claim 1, “server” first appears in limitation 1b’s recitation of “a server.” Ex. 1001, 21:27–28. Every subsequent mention of “server” in claim 1 recites “the server.” Id. at 21:37, 21:40, 21:48, 21:51, 21:53, 21:60. Thus, grammatically, each time claim 1 recites “the server,” it refers back to the same “server” as in all previous recitations. Accordingly, claim 1’s plain meaning refers to the same server each and every time it recites “server.” See Salazar v. AT&T Mobility LLC, --- F.4th ---, 2023 WL 2778774 *3–4 (Fed. Cir. Apr. 5, 2023) (explaining claim language reciting element with definite article refers to same element previously recited) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008); Harari v. Lee, 655 F.3d 1331, 1341 (Fed. Cir. 2011)). Neither party argues that any reason exists to construe claim 1’s recitations of “a server” and “the server” differently from their plain meanings. See generally Pet.; Prelim. Resp. We construe every one of claim 1’s recitations of “server” as referring to the same server (the “same-server requirement”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23
- Other 314aInstitution denied discretionary otherInstitution denied
“functions (VTSAs) of the server 111, the server 130, and merchant server hosting the product database 121 into the same server.” Pet. 41. As explained above in Sections II.C.3.a–c, Petitioner fails to demonstrate a reasonable likelihood of establishing unpatentability of either of challenged independent claims 1 and 10 or any of challenged dependent claims 2–4, 6, 8, 9, and 11–14. Considering this, to the extent Petitioner’s arguments and evidence may demonstrate a reasonable likelihood of prevailing on its challenge of dependent claim 5 as allegedly obvious over Fletchall and Xavier, we do not find that instituting inter partes review would use the Board’s or the parties’ resources efficiently. See 35 U.S.C. 316(b).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00782 · APJ Neil T Powell · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood of prevailing on claims 1–18 and 20 and declining to reach claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) for the ʼ184 patent is a person with a Bachelor of Science degree in electrical engineering, computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field. Pet. 7 (citing Ex. 1002 ¶¶ 42–43). Petitioner elaborates that “more experience would compensate for less formal education, and vice versa.” Id. Patent Owner has not provided an assessment of the level of ordinary skill in the art. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Almeroth Declaration and is consistent with the ’184 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM INTERPRETATION The Petition explains that “Petitioner and its expert have applied the plain and ordinary meaning of all claim terms of the challenged claims.” Pet. 8. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions. We do not discern a need to construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“limitation 1[d] means Barry inherently discloses limitation 1[d], Petitioner also does not support that position. Establishing inherent disclosure of a limitation requires showing that the limitation necessarily results from the prior art disclosure. Continental Can Co. v. Monsanto Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities.”). Petitioner does not allege or demonstrate that a “unique identifier of a portable guest device” necessarily results from the disclosure of Soleimani’s paragraph 175, much less that such an identifier is necessarily associated with location and a timestamp. As noted above, the Petition states that “[i]dentifiers may be associated with location and timestamp.” (Pet. 26 (emphasis added)). Because Petitioner does not support its position that “Barry discloses” limitations 1[d] and 7[d] and does not argue that limitations 1[d] and limitation 7[d] would have been obvious, Petitioner does not demonstrate a reasonable likelihood of prevailing on Ground 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have combined the references’ teachings. Patent Owner first argues that Petitioner has not demonstrated a motivation to combine Berg with Soleimani. Prelim. Resp. 31–33. Patent Owner then argues that Petitioner has not demonstrated a motivation to modify Soleimani with the teachings of Brulé. Id. at 34. With respect to this issue, weighing the parties’ arguments, we see some merit in Petitioner’s arguments that a person of ordinary skill in the art would have been motivated to combine the teachings of Soleimani, Berg, and Brulé. We do not further address the merits of Petitioner’s challenge to claim 19. As explained below in Section III, given that Petitioner fails to show a reasonable likelihood of prevailing with respect to nearly all of the challenged claims, we exercise our discretion not to institute inter partes review.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,045,184 - Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution deniedPTAB · Apr 18, 2019 · IPR2018-01776 · APJ Neil T Powell · IPR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the asserted obviousness grounds and citing petition clarity, prior art accessibility, and objective evidence.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).9 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. 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)).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“disclosure teaches identity between the engineering concepts for amplify uplink channels and amplifying downlink channels. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Aida or Kenington, even if they could have. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ordinary skill in the art could have modified Aida or Kenington. See Pet. 30. Petitioner also cites paragraph 110 of McKay, which discloses an example in which “[w]ith the exception of the frequency band, each of the elements of the uplink F1 signal path 274 is functionally identical to the corresponding element previously described with respect to the downlink signal F2 path 236.” Ex. 1107 ¶ 110; Pet. 30. Specifically, Petitioner contends that McKay’s disclosure tends to demonstrate that the paths for uplink and downlink channels could be similar. Pet. 30 (citing Ex. 1107 ¶ 110). But even if McKay demonstrates that a person of ordinary skill in the art could have made paths for uplink channels and downlink channels similar, Petitioner does not explain why a person of ordinary skill in the art would have so modified Aida or Kenington.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20. Indeed, Petitioner alleges that disclosure of the ’190 patent demonstrates what “the [person of ordinary skill in the art] would understand.” Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what a person of ordinary skill in the art would understand now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,402,190 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,995,433
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.