- Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 24, 2024 · IPR2024-00323 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of review of claims 1–20, finding the Fintiv factors favored denial and the petition lacked compelling merits; it also denied based on multiple petitions.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13
- Parallel petitionsDenied
“and purporting to explain differences between the petitions. Paper 3. Petitioner ranks this Petition above the petition in IPR2024-00324. Id. at 1. As discussed above, we do not find that the instant Petition meets the compelling merits standard, but we find that the petition in IPR2024-00324 does meet this standard for at least one claim. Petitioner also argues that certain references are prior art under 35 U.S.C. § 102(e) that can be antedated by Patent Owner. Paper 3 at 1–2. Petitioner argues that Redford predates the ’751 patent’s earliest priority date by more than a year whereas one of the references in IPR2024-00324 only predates the ’751 by about six weeks. Id. at 2. As Patent Owner points out, however, Petitioner asserts a challenge in IPR2024-00324 that relies only on prior art under § 102(b), which cannot be predated. Paper 10 at 2. Thus, the petition in IPR2024-00324 also provides an advantage in the event of a priority dispute.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Redford do not meet the compelling merits standard. Petitioner does not rely on Bartfeld or Gonze to teach the “message” limitations. See Pet. 14–21 (relying on Bartfeld for limitations regarding a synchronization code); id. at 24–36 (relying on Gonze for limitations regarding selecting and controlling a first media player application). 7. Fintiv Determination On balance, the first five Fintiv factors favor discretionary denial, and the Petition does not meet the compelling merits standard of the Guidance Memo. Therefore, we determine that discretionary denial is appropriate in view of the related district court litigation.” slip op. at 22
- BurdenNot reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-00888 · APJ Steven M Amundson · IPR · Institution
The Board denied institution: Petitioner failed to show a reasonable likelihood of unpatentability for claims 1–13, and trying claim 42 alone would be inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institution that Elko discloses a “first virtual microphone” according to claim 1 and Petitioner does not rely on Boll or Buck for teaching a “first virtual microphone” according to claim 1, Petitioner does not establish sufficiently for purposes of institution that the combined disclosures in Elko, Boll, and Buck teach claim 1’s subject matter. See Pet. 23–25; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58; supra § IV.D.4(a). Hence, Petitioner does not demonstrate a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103(a) as obvious over Elko, Boll, and Buck.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Other 314aInstitution denied discretionary otherDenied
“the ’213 patent. Pet. 3, 23–83. As discussed above, Petitioner fails to satisfy the “reasonable likelihood” institution standard for four of the five challenges and thirteen of the fourteen challenged claims. See supra §§ IV.D–IV.E. At best, Petitioner satisfies the “reasonable likelihood” institution standard for only one of the five challenges and only one of the 6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. fourteen challenged claims. See supra § IV.F. These circumstances weigh in favor of exercising our discretion under § 314(a) to deny institution. See, e.g., Netscout Sys., Inc. v. Longhorn HD LLC, IPR2021-01258, Paper 11 at 23–24 (PTAB Feb. 10, 2022) (exercising discretion to deny institution); Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01391, Paper 7 at 25–27 (PTAB Feb. 25, 2020) (exercising discretion to deny institution).” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,321,213 - 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
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.