• Ens Labs Ltd. v. Unstoppable Domains Inc.Institution denied
  PTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.

  RulingsInstitution decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 11,558,344
• Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution denied
  PTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))).” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,265,096
• Qualcomm Incorporated / Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution denied
  PTAB · Jun 17, 2024 · IPR2024-00355 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to institute an inter partes review. We may institute an inter partes review only if “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in view of the Samsung litigation and the Qualcomm litigation. See Prelim. Resp. 10–22; supra § II.B. Petitioner argues that we should decline to exercise our discretion under § 314(a) to deny institution. See Pet. 82–84. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra §§ IV.E–IV.I. Hence, we do not consider discretionary denial under § 314(a).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of analysis, we adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’893 patent as well as the asserted prior art. For instance, “a master’s degree” and “three years of work experience” would have allowed someone to understand the ’893 patent as well as the asserted prior art. See Ex. 1003 ¶ 32. Moreover, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Hence, “it is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “for “each data package comprising N data elements” is “significantly broader” than Petitioner’s proposed construction. See Pet. 9–10; Ex. 1026, 25; Ex. 1027 ¶ 164; Ex. 2034, 26. To decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial, we must determine the meaning of “each data package comprising N data elements.” Based on the current record, we agree with Petitioner that “each data package comprising N data elements” means “every data package communicated by the network stations has a fixed size of N data elements.”” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,072,893
• Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution denied
  PTAB · Oct 2, 2023 · IPR2023-00569 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted AEM, IMU-Okabe, or IMU-Okabe-Li ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 27–29). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. at 6 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 46). Patent Owner indicates that it proposes “construction for certain claim language below,” but it does not actually identify any claim language for construction, let alone provide any constructions. Prelim. Resp. 16–17. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a non-linear pathway.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,301,119
• Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution denied
  PTAB · Jun 20, 2023 · IPR2023-00152 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 42). Patent Owner proposes claim constructions for “set of pixels,” “pixels that lie along a link/length of pathway between the starting point and the ending point,” and “in a loop.” Prelim. Resp. 17–28. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a nonlinear pathway. Second, Petitioner’s argument relies on AEM teaching that “AECS6 necessarily allows a user . . . to select any or all pixels of the layer to be nontransparent and thus included in the layer’s mesh to be moved and animated.” Pet. 21. We disagree, however, that AEM discloses selecting pixels to be nontransparent and including these pixels in a mesh to be moved and animated. That AECS6 arguably allows selected nontransparent pixels to be included in a mesh is not sufficient to establish that AEM discloses doing so. Petitioner contends that AECS6 and the screenshots of AECS6 created by Dr. Greenspun establish the background knowledge possessed by a person of ordinary skill in the art but does not explain adequately why AECS6’s alleged capability would cause one of ordinary skill in the art to understand AEM to teach selecting pixels of a layer to be nontransparent and including the selected pixels in the layer’s mesh. See Pet. 17 n.6 (quoting Qualcomm, 24 F.4th at 1376). Again, any pixels selected to be nontransparent being included in a mesh is mere happenstance.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,558,342
• Dell Inc. / Dell Technologies Inc. v. Neo Wireless LLCInstitution denied
  PTAB · Jun 21, 2022 · IPR2022-00277 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim over the asserted prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’908 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, for purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner submits that “[n]o formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Pet. 5 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner also does not propose any terms for construction. See generally Prelim. Resp. We determine that no terms require explicit construction to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “would have had a reason to modify Ma in view of the advantages that TR teaches regarding its guard period. Pet. 7–11, 24 (citing Ex. 1006, 197, 199, 207–208, Figs. 4, 17; Ex. 1003 ¶¶ 57–60, 96). However, Petitioner does not show sufficiently, on this record, that the above-discussed disclosures of Ma and TR would have led an ordinarily skilled artisan to incorporate TR’s guard period into Ma’s RACH when that artisan has considered the full disclosure of Ma. Specifically, Petitioner’s analysis, and Dr. Valenti’s testimony in this regard, are both general in nature and fail to explain adequately how or why one of ordinary skill in the art would have implemented TR’s guard period into Ma’s RACH structure.9 See TriVascular, 812 F.3d at 1066 (“Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” (citation omitted)). Instead, as Patent Owner points out (Prelim. Resp. 20–24), Ma teaches the use of a “spreading factor,” which causes Ma’s RACH signature to be “transmitted at a very low relative power level: e.g., -16 dB,” which “constitutes a very weak interference to the traffic and signalling channels.” Ex. 1005 ¶ 208. In addition, Patent Owner notes that Ma discloses the use of MC-OFDMA, which Ma teaches as introducing “a code multiplexing on top of the ‘frequency and time divisions’ created by the OFDMA.” Id. ¶ 149. For these reasons, and the reasons discussed below, we credit the declaration 9 Dr. Valenti’s testimony merely mirrors the Petition, and Dr. Valenti does not provide additional explanation to support Petitioner’s arguments. See Ex. 1003 ¶¶ 57–60, 96. testimony of Patent Owner’s expert, Mr. Alberth, that Ma’s teachings already addressed the problems TR’s guard period was meant to solve, and that there would have been “no need to add an additional timeslot to [Ma’s] RACH slot to further reduce interference between RACH and Mode-1.” Ex. 2001 ¶ 30.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,833,908
• Google LLC v. Uniloc Luxembourg, S.A.Rehearing denied
  PTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,724,622
• Google LLC v. Uniloc Luxembourg S.A.Institution denied
  PTAB · Apr 16, 2018 · IPR2017-02085 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all grounds, finding no reasonable likelihood that Google would prevail in showing any challenged claim 1–15 unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “that Zydney discloses “generating an instant voice message, wherein generating includes recording the instant voice message in an audio file and attaching one or more files to the audio file,” as recited in claim 1. Accordingly, we conclude that Petitioner has not established a reasonable likelihood that it would prevail in showing that either claim 1 or claim 13, which depends from claim 1 and accordingly includes the same limitation, is anticipated by Zydney.” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Having considered the parties’ respective arguments and cited evidence, we conclude, particularly in view of Patent Owner’s proposed construction in related litigation, that “node” is properly construed for purposes of this Decision as encompassing a “potential recipient.” See Pet. 10–11; Ex. 1013, 14; see also Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.”).6 Although we acknowledge Patent Owner’s arguments that, for example, “Petitioner overlooks an important consequence of its proposed construction: a person may be ‘available’ or ‘unavailable’ for communication independent of the online/offline status of their communication device” and that “a person may inform a system that they are ‘unavailable,’ that they do not wish to be disturbed during resting hours, etc. regardless whether their recipient device is online during that time” (Prelim. Resp. 23), we do not understand Petitioner’s contentions of unpatentability in this case to be based on a reading of a “potential recipient”—and hence a “node”—to be “a person” (see Pet. 22–25 (discussion mapping Zydney to claim elements reciting “nodes”)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “petition in IPR2017-01257, wherein claim 1 was asserted to have been obvious over Zydney, is applicable here as well. In that case, we were not persuaded that the petitioner there had established sufficiently that Zydney teaches or suggests “attaching one or more files to the audio file,” as recited in claim 1, to demonstrate a reasonable likelihood of succeeding on the asserted ground. We agreed with Patent Owner in that case that the portions of Zydney now relied upon by Petitioner as allegedly disclosing this limitation instead disclose attaching additional files (e.g., a multimedia file) to a voice container, rather than to an audio file as recited in claim 1. See Case IPR2017-01257, slip op. at 18 (PTAB Dec. 4, 2017) (Paper 8) (“1257 DI”); Ex. 1004, 19:2–12, Figs. 16–18. We further observed that Zydney discloses that a voice container may “contain[] voice data or voice data and voice data properties” (Ex. 1004, 12:6–8) and also “has the ability to have other data types attached to it” (id. at 19:6), but we explained that “[e]ven if we regard Zydney’s voice data as being an audio file, however, we are not persuaded that Zydney’s disclosure that another file may be attached to a voice container that contains such an audio file teaches or suggests attaching that other file to the audio file.” 1257 DI 18–19. That conclusion applies a fortiori in this case, where Petitioner is alleging Zydney anticipates claim 1.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “On the record before us, Petitioner has not sufficiently established that the combination of Zydney and Gralla teaches or suggests the step of “controlling a method of generating [an] instant voice message based upon a connectivity status [of] each recipient,” so as to demonstrate a reasonable likelihood of succeeding in showing that claim 3 is unpatentable over the combination. As set forth in Section III.B.2.b.iii above, the deficiency of Zydney regarding this step is not with respect to whether the method of generating must be “chosen/selected/controlled automatically by a computing device . . . and not manually by a user,” but rather that Zydney does not disclose that a method of generating an instant voice message may be controlled—manually or otherwise—based upon connectivity status of each recipient. Thus, even if Zydney’s selection between pack and send and intercom communication modes were made automatic based on Gralla’s teaching of automatically varying message sound quality, that still would not teach or suggest controlling a method of generating the instant voice message based upon a connectivity status of each recipient. Further, even if we were to accept Petitioner’s assertions that (1) Gralla’s disclosure of varying message sound quality based on a sender’s Internet connection speed would have taught a person of ordinary skill in the art that computer software can automatically vary the manner in which digital voice data is generated, based on a predetermined control variable, and (2) high/low connection speed connotes “connectivity status” (see Pet. 42–43), we are not persuaded that Gralla teaches or suggests controlling a method of generating an instant voice message based upon a connectivity status of each recipient, as required by claim 3. Notably, whereas Petitioner suggests that application of Gralla’s techniques to Zydney’s system would have been a “use of a known technique to improve similar devices (methods, or products) in the same way” (see id. at 43), Dr. Min’s testimony cited in support focuses on whether it would have been obvious to “remov[e] a manual step” and “automatically control voice data generation,” rather than on whether it would have been obvious to control a method of generating a message based on recipients’ connectivity statuses (see Ex. 1003 ¶¶ 114, 115). Accordingly, we are not persuaded that Gralla cures Zydney’s deficiency with respect to claim 3, and we conclude, therefore, that Petitioner has not established a reasonable likelihood that it would prevail in showing that either claim 3 or claims 4–6 and 8, which depend from claim 3 and accordingly include the same limitation, are unpatentable over the combination of Gralla and Zydney.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,199,747
• Google LLC v. Uniloc Luxembourg S.A.Institution denied
  PTAB · 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. 1718. 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. 1718. 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 denial
  Patents in suitUS 8,995,433
• Google LLC v. Uniloc Luxembourg S.A.Institution denied
  PTAB · Mar 19, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Institution

  Institution denied for claims 3–23 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons given below, we determine after having considered the information presented in the Petition, the Preliminary Response, and the Reply that Petitioner has not established a reasonable likelihood of prevailing as to any of the challenged claims of the ’622 patent, and we deny institution of inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not demonstrated a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney. We recognize that we previously instituted trial with respect to claim 3 over the combined teachings of Zydney and other references in Cases IPR2017-01667 and IPR2017-01797. In those cases, however, the respective petitioners proffered expert testimony and advanced arguments, different from those presented here, sufficient to establish a reasonable likelihood that the claimed object field would have been obvious to a person of ordinary skill in the art. There is insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body,” without any disclosure of the structure of that body, expressly discloses the recited object field. We also agree with Patent Owner that Petitioner has not established a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. See Prelim. Resp. 27–28. Although Zydney discloses that its voice container includes “voice data” and “information concerning codec type, size, sample rate, and data,” in addition to the “voice data properties components” depicted in Figure 3 (see Ex. 1005, 23:1–2, 23:10–12), and we understand that Figure 3, therefore, does not provide a “comprehensive . . . list” of voice container components (cf. Prelim. Resp. 27), we agree with Patent Owner that Petitioner has not shown that voice data necessarily would be included in an “object field” (see id. at 26– 27). For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its contention that claim 3 is anticipated by Zydney. c. Dependent Claims 4–8, 11, 13, and 18–21 Claims 4–8, 11, 13, and 18–21 depend directly or indirectly from independent claim 3. Ex. 1001, 24:28–52, 24:61–25:3, 25:9–13, 25:31–50. Accordingly, the deficiency in Petitioner’s anticipation showing for independent claim 3, discussed above, also applies to these claims. Petitioner’s arguments directed to the additional limitations of these dependent claims do not cure the deficiencies. See Pet. 19–33.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “over the combined teachings of Zydney and Enete. Pet. 33–38. In particular, Petitioner relies on Enete as “confirm[ing] that an instant voice messaging system having a central server . . . that communicates with instant voice message client systems via a network interface was a predictable option before the ’622 patent” (id. at 34) and as demonstrating that the features of a central server maintaining connection information for client software agents (corresponding to the “communication platform system” and “instant voice message client systems” recited in claim 3, respectively) were well-known in instant voice messaging systems before the invention of the ’622 patent (id. at 35). Regarding the object field limitation of claim 3, however, Petitioner relies only on its arguments presented in connection with its assertion that Zydney anticipates claim 3. Id. at 38. For the reasons stated in our discussion of those arguments above, we also conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing that claim 3 is unpatentable over the combined teachings of Zydney and Enete.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim interpretation standard to be applied in inter partes reviews). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those claim terms that are in controversy need to 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); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner proffers a construction for any claim term. Pet. 10; Prelim. Resp. 19. Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review, we determine that no claim terms require an express construction to resolve the issues presented by the patentability challenges.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,724,622

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.