- Infinera Corp. v. Core Optical Technologies, LLCRehearing deniedPTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3
- BurdenDecided for patent owner
“Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10
§ 103 obviousnessPatents in suitUS 6,782,211 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Apr 3, 2019 · IPR2018-00658 · APJ John P Pinkerton · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claim 1 because JVT-B045 did not teach or suggest the claimed periphery-based determining function.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place 1 In Ground 1, Petitioner asserts claim 1 is unpatentable under 35 U.S.C. § 103 over the combination of H.324, H.263, and JVT-B045. Pet. 47–66. where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,769,238 - Unified Patents Inc. v. Multimedia Content Management LLCRehearing deniedPTAB · Feb 25, 2019 · IPR2017-01934 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show Freund taught or suggested a service provider network under the proper construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“claims 1‒5, 9, 12, 19, 23‒27, and 33 as obvious over Freund. Req. Reh’g 1‒2. On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“the specification of the ’468 patent. However, the ’468 patent teaches “the Internet is composed of several components including, for example, content providers for generating content; service providers for delivering content; subscriber terminals for receiving, displaying and playing content; and various network elements between service providers and subscribers for aiding in the distribution of content.” Ex. 1001, 1:29‒35. “Service providers include, for example, telephone line carriers, enterprise data centers, and cable television providers.” Id. at 1:35‒37. The ’468 patent distinguishes between service providers and subscribers, noting that “[s]ubscriber terminals are located at subscriber premises and include, for example, personal computers [and] televisions configured with modems.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“any arguments or evidence in the Petition, or that our determinations based on the preliminary record were an abuse of discretion. First, Petitioner did not fully develop the argument it now makes, instead relying on conclusory statements and identifying portions or figures of the prior art without sufficient explanation. In particular, Petitioner cited three embodiments: the embodiment shown in Freund Figure 3A (see, e.g., Pet. 20‒22 (claim 1[b])), the embodiment shown in Freund Figure 3B (see, e.g., Pet. 39‒40 (claim 1[f])), and a hypothetical embodiment employing a widely dispersed network (see, e.g., Pet. 31 (claim 1[c])). For certain limitations, Petitioner cites only the embodiment shown in Figure 3A. See, e.g., claim 1[a], Pet. 20‒22. But Petitioner cites all three embodiments, including the hypothetical embodiment, in support of other limitations without explaining how these embodiments would be combined, if at all. See, e.g., claim 1[c], Pet. 27‒31. Petitioner did not sufficiently explain how to combine these three embodiments in a way that teaches or suggests all of the limitations of claim 1.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provider network” for each of the limitations discussed above. See Pet. 18‒ 46. Even if Petitioner had explained how the three identified embodiments were being combined, Petitioner has failed to show a reasonable likelihood of establishing that Freund teaches or suggests a “service provider network” under the broadest reasonable construction of that term. For these reasons, Petitioner has not persuaded us that we abused our discretion in our denial of the Petition.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,799,468 - Sonitor Technologies, Inc. v. Centrak, Inc.Rehearing deniedPTAB · Feb 21, 2019 · IPR2018-00740 · APJ Frederick C Laney · IPR · Rehearing
The Board denied Sonitor’s rehearing request, leaving institution denied for claims 1–14 and 21–33 because Sonitor had not shown a reasonable likelihood of prevailing on its obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“because, rather than resolving a factual dispute in Centrak’s favor, the Decision concludes Sonitor failed to show persuasively that there was a reasonable likelihood it would prevail in establishing the facts necessary to support an unpatentability determination of the challenged claims in view of Corrado (Ex. 1005) and Welles. Although we agreed with Centrak’s argument “that Sonitor’s basis for combining Corrado and Welles in the manner claimed relies on a critical unfounded factual assertion about what Welles teaches” (Dec. 14), we did not reach that conclusion by weighing Centrak’s argument against Sonitor’s alleged facts. Instead, we carefully evaluated Sonitor’s contentions, independent of any factual representations Centrak may have made, and determined, based on the record before us, that Sonitor’s support for the facts alleged was deficient. See Dec. 14–19. Put another way, we did not improperly credit Centrak’s uncorroborated attorney argument over Sonitor’s allegedly supported arguments; we made a determination that Sonitor did not establish a reasonable likelihood of success because Sonitor’s arguments did not have persuasive evidentiary support in the record before us.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, as noted in the Decision, Sonitor’s declarant, Gary Michael Gaukler, Ph.D., does not provide additional information sufficient to explain why the disputed passage would have been understood by a skilled artisan in the manner Sonitor alleges. Dec. 15 n. 5. Such conclusory testimony carries little, if any, probative and/or evidentiary value. See, e.g., 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts . . . on which the opinion is based is entitled to little or no weight.”). Dr. Gaukler states the same thing that Sonitor argues in the Petition (compare Pet. 17 with Ex. 1003 ¶¶ 51–52) and both fail to explain why a skilled artisan would have understood column 8, lines 5–9, of Welles to teach synchronizing the transmitters such that they transmit signals at different times; both simply state this as a conclusion. Therefore, Sonitor’s reliance on Dr. Gaulker’s declaration as proof of its argument on this point is misplaced. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“we must disregard the testimony of an expert that is plainly inconsistent with the record”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”) explains that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” Id. at 48,768 (emphasis added). Here, Sonitor has not established “good cause” for us to consider Centrak’s Reply Brief. Sonitor does not contend Centrak’s Reply Brief was not available before we issued our Decision in this matter. Sonitor asserts instead that it “did not earlier present these contrary admissions by Centrak because the ‘timing’ and ‘synchronization’ features of the claims were not the focal point of the proceeding until the Board’s institution decision adopted Centrak’s factually implausible interpretation of Welles.” Req. Reh’g 12. Sonitor, however, could have sought to supplement the record and provide additional briefing immediately after receiving Centrak’s Preliminary Response, but it chose not to do so. See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary response . . . . Any such request must make a showing of good cause.”). Because Sonitor fails to provide a reasonable explanation for why it did not present Centrak’s Reply Brief sooner, and fails to otherwise justify persuasively why we should consider the Reply Brief arguments made by Centrak in a different case to address a different issue (i.e., written description and/or enablement), we do not find “good cause” exists for us to allow it to become part of this record now. Therefore, Sonitor’s arguments based on Centrak’s Reply Brief are not entitled to consideration.” slip op. at 7
NonePatents in suitUS 9,622,030 - PTAB · Oct 17, 2018 · IPR2017-00467 · APJ Kamran Jivani · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Uchida and Bramhill combination did not show the claimed write restriction for claims 15, 18, 24, and 25.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“In our Decision, we determined Petitioner failed to show a reasonable likelihood of success on its challenges combining Uchida and Bramhill because Petitioner failed to show teachings or suggestions sufficient to meet the following limitation of independent claim 15: “providing restricted-access to the storage device when the storage device does not store the device-specific security information by preventing the digital data from being written to the storage device during the write access.” Dec. 13–15. We similarly determined Petitioner failed to show teachings or suggestions sufficient to meet the commensurate limitation recited in independent claim 18: “configuring the storage drive to prevent write access to the storage device when the security information is not sensed.” Id. at 15.” slip op. at 3
NonePatents in suitUS 6,968,459 - Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing deniedPTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Rehearing. Reh’g Req. 4–6. A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,761,130 - Unified Patents Inc. v. Multimedia Content Management LLCInstitution deniedPTAB · Mar 5, 2018 · IPR2017-01934 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims under either 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. §§ 311–319 to institute an inter partes review of claims 1‒5, 9, 11‒13, 19, 23‒27, and 32‒34 of U.S. Patent No. 8,799,468 B2 (“the ’468 patent”). Multimedia Content Management LLC (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which requires that Petitioner demonstrate a reasonable likelihood that it would prevail with respect to at least one challenged claim, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes constructions for the following terms, each of which is recited in independent claims 1 and 23: “service provider network,” “controller instructions,” and “gateway unit.” Pet. 13‒17. Patent Owner proposes constructions for the same terms, as well as “generate [controller instructions],” which is recited in claims 1 and 23. Prelim. Resp. 4‒12. No term requires an express construction. We address Petitioner’s proposed construction of “service provider network” below in the context of how the prior art applies to the challenged claims.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals are similar, although Petitioner proposes that a person of ordinary skill would possess more specific experience. Even under Petitioner’s articulation of the level of ordinary skill, with such particularized experience, we conclude that the Petition does not set forth a reasonable likelihood of prevailing. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s reasoning is not persuasive. Petitioner discusses Freund’s embodiment disclosed in Figure 3A, where supervisor 323 is connected to client 310 over LAN 320, which is separated from Internet 340 by firewall 330. However, Freund also discloses an embodiment where the supervisor node (supervisor 373) is located remotely from client 310. Ex. 1004, Fig. 3B. In this “ISP-based embodiment,” client 310 is connected to decentralized installations called Points-of-Presence (POPs), such as POP 320a. Id., 21:57‒60. Client 310 may be connected to POP 320a directly or through a LAN. Id., 21:60‒64. POP 320a is connected to ISP Authentication Server 371 and ISP Supervisor Server 372 over Internet 340. Id. ISP Supervisor Server 372 executes the supervisor component 373. Id. In this embodiment, supervisor 373 provides rules to POP 320, which in turn monitors content requests submitted by client 310. Id., 22:7‒21. Notably, contrary to the hypothetical suggested by Petitioner, client 310 does not receive rules from supervisor 373 over Internet 340. Id. Instead, POP 320a receives rules from supervisor 373 over Internet 340. Id. POP 320a uses these rules to manage the access to content granted to client 310. Id. Thus, Freund discloses an embodiment with widely dispersed geographic locations, but does not disclose client 310 (the “gateway unit”) receiving rules from the supervisor node over Internet 340 in this embodiment (“configured to receive the controller instructions from the controller node through the service provider network”). Dr. Hutchinson does not address this alternate embodiment, which operates differently than the hypothetical system proposed by Petitioner. See Ex. 1003 ¶¶ 102‒103. To the contrary, Patent Owner’s expert, Mr. Williams, testifies that to the extent an organization has multiple premise locations where each contains a LAN, none of these locations contain a “service provider network” over which the “gateway unit” receives “controller instructions,” as claimed. Ex. 2001 ¶¶ 114‒115. To the extent the opposing testimony of Dr. Hutchinson and Mr. Williams identifies a genuine issue of material fact, we have viewed that issue in the light most favorable to Petitioner. Nevertheless, because of the deficiencies in Dr. Hutchinson’s testimony, we give greater weight to the testimony of Mr. Williams. Accordingly, Petitioner’s argument that it would have been obvious in a system with geographically dispersed clients and supervisors to modify Freund’s teachings such that client 310 would receive rules from supervisor 323 over Internet 340 is unpersuasive because it is not supported by persuasive evidence and is contrary to the teachings of Freund.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,799,468 - Securenet Technologies, LLC v. Icontrol Networks, Inc.Rehearing deniedPTAB · Feb 8, 2018 · IPR2016-01909 · APJ Ken B Barrett · IPR · Rehearing
The Board denied SecureNet’s rehearing request, leaving intact its denial of IPR because the petition did not persuasively show that Johnson’s icons were the claimed objects maintained on the security server.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in the record. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). With this in mind, we address the arguments presented by Patent Owner in turn.” slip op. at 2
- BurdenDecided for patent owner
“illogical, and Petitioner now asserts that “figures are meant to be exemplary” and concludes that Johnson’s Figure 3 does not show all of the icons available. Req. Reh’g 6–7. Petitioner’s resort to the speculative argument that the depiction of, for example, a single window icon in Johnson’s Figure 5 is exemplary of multiple, non-depicted window icons highlights the correctness of our determination that the evidence is too unclear for Petitioner to have met its burden.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Pet. 29; see also Dec. 12 (quoting the same). In the Decision, we noted that “[t]he cited expert testimony appears to be the same assertion with little elaboration and explanation for the bases of the opinion.” Dec. 12 (citations omitted). We also noted that, in its Preliminary Response, Patent Owner argued that the expert testimony was “bald opinion,” and that Johnson does not describe the nature of the icons. Id. (quoting Prelim. Resp. 18). We further stated:” slip op. at 3
NonePatents in suitUS 8,073,931 - LG Electronics, Inc. v. Broadcom CorporationInstitution deniedPTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,284,844 - PTAB · Apr 17, 2017 · IPR2016-01185 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution, finding the Petition insufficient to show a reasonable likelihood of prevailing on any challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 7,809,373 B2 (Ex. 1001, “the ’373 patent”), contending that “the Decision misapprehends or overlooks the Petition’s application of the prior art to the language of independent claims 15 and 24.” Paper 8 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As determined in the Institution Decision, the Petition’s reliance on this disclosure does not sufficiently support its contention that “[i]n order for ‘contention free’ ranging to be performed, two mobile stations cannot transmit the same ranging code at the same time,” nor its conclusion that, “[a]ccordingly, in a contention free ranging procedure, only one mobile station is allowed to send the ranging code during a particular time.” Dec. 15; Pet. 46 (citing Ex. 1003 ¶ 108; Ex. 1018 ¶¶ 98, 105, 129). As indicated expressly in the cited passage of Etemad, it is also possible for contention-free ranging to be achieved through channel reservation rather than with a dedicated preamble. “Notably, this is different from the problem addressed by the ’373 patent, which seeks to avoid collisions when two mobile terminals simultaneously attempt to use the same random access channel to effect handovers.” Dec. 16 (citing Ex. 1001, col. 4, l. 66–col. 5, l. 7).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, and more significant, even if Son, in isolation, disclosed a “dedicated preamble,” the Petition insufficiently articulates a compelling argument that the combined disclosures of Son and Etemad meet the specific combination of limitations recited in the challenged claims. In its argument, the Petition contends that the combination of Etemad and Son “teaches that the target base station ‘assigns . . . a ranging code’ to the mobile station for use during the handover” and that “[t]he mobile station uses this assigned ranging code to perform a ‘contention-free’ initial ranging procedure with the target base station.” Pet. 45 (citing Ex. 1005, col. 5, ll. 43–46, Fig. 2) (alterations by Petitioner). The portion of Etemad cited by the Petition to support this contention is:” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“But this contention, set forth in the Petition, is too conclusory to satisfy Petitioner’s burden. In particular, we agree with Patent Owner that “[t]his disclosure makes no reference to or explanation of a dedicated preamble, and Son provides no detail on how the code is assigned or how it is used by the terminal.” Prelim. Resp. 18. Although the Petition cites to testimony by Petitioner’s expert, Jonathan Wells, Ph.D., to support its contention, the cited portion of the expert testimony merely repeats the contention without adequate elaboration or explanation and is, therefore, similarly conclusory. Ex. 1003 ¶ 99; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). Nor is the Petition’s additional citation of portions of U.S. Pat. Publ. No. 2005/0041573 (“Eom”) sufficient to support its contention. The Petition does not adequately explain how the cited portions of Eom—which are not applied directly in any ground asserted by Petitioner—inform an understanding of Son’s disclosure to reach the conclusion Petitioner advocates.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,809,373
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.