- International Business Machines Corporation v. Digitaldoors, Inc.Institution deniedPTAB · Dec 1, 2023 · IPR2023-00967 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claim 81 because the Fintiv factors favored denial and the Petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“compelling-merits question requires a higher standard of proof, ‘highly likely to prevail,’ than the statutory standard for institution, ‘reasonably likely to prevail.’” Prelim. Resp. 48. Patent Owner asserts that the Petition is deficient because Bossemeyer is not analogous art to the ’825 patent. Id. at 2, 16–23. Patent Owner contends also that Bossemeyer and Glick fail to teach the claimed “extracted data” and “reconstruction” claim elements discussed infra. Id. at 2, 23–41. Finally, Patent Owner contends that Petitioner fails to provide sufficient motivation to combine Bossemeyer and Glick. Id. at 42–47. slip op. at 19
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 35 (“Specifically, in Bossemeyer, user data is partitioned, e.g., extracted, into limited access information and/or proprietary information, and public information.”) (color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not imply or suggest extraction.” Easttom Decl. ¶ 29. As Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). construction (Pet. 11) and Patent Owner’s choice not to state its position on claim construction. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,313,825 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 1, 2023 · IPR2023-00968 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution on claims 1, 2, 10, 15, 16, 19, 33, 34, 42, 47, 48, and 51, citing Fintiv and finding no compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner’s analysis based on the most recent time- to-trial statistics and the schedule set by Judge Gilstrap. We are not persuaded by Petitioner’s argument based on out-of-date data. We find that this factor favors exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. For the reasons given, Petitioner’s arguments and evidence do not present a “compelling, meritorious challenge.” In view of this determination, we do not need to address Patent ’047 patent or that there is insufficient motivation to combine Bossemeyer and Merenda.” slip op. at 27
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,322,047 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · May 5, 2023 · IPR2022-01554 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution on claims 17–21, 25–35, 59–69, 85–89, and 93–99 under § 314(a), finding the Fintiv factors favored denial and no compelling merits challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv Memo directs that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Ex. 2011, 4. The Director defines “[c]ompelling, meritorious challenges [as] those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. We consider whether there are compelling merits when, as here, our analysis of the first five Fintiv factors favors denial of institution. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 5 (PTAB Feb. 27, 2023) (precedential). For the reasons below, we determine that the Petition and the preliminary evidence do not present a compelling, meritorious challenge.7” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In particular, the preliminary record does not plainly show that Alger or the other references teach or disclose a portable device and a separate terminal with processing capabilities sufficient to facilitate a key exchange between the terminal and the portable device as recited in the claims. See, e.g., Ex. 1301, 32:48–53, 33:26–30.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · May 5, 2023 · IPR2022-01553 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–16, 22–24, 36–53, 58, 70–84, and 90–92, exercising § 314(a) discretion under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs against discretionary denial, and factors 2 and 3 weigh heavily in favor. Moreover, Roku has not submitted a Sotera-type stipulation that would make discretionary denial inappropriate under the Fintiv Memo, and likewise, the Petition does not show compelling evidence of unpatentability under factor 6. Given the late stage of the parallel district court proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“IV. CONCLUSION For the above reasons, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1– 16, 22–24, 36–53, 58, 70–84, and 90–92 of the ’584 patent. V. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In particular, the preliminary record does not plainly show that Alger or the other references teach or disclose a portable device and a separate terminal with processing capabilities sufficient to facilitate a key exchange between the terminal and the portable device as recited in the claims. See, e.g., Ex. 1201, 32:48–53, 33:26–30. In the Petition, Roku contends that “Alger’s PDA 120 is a ‘portable device,’” and that “Alger’s ‘monitor 147,’ which includes a screen/display, . . . , is the ‘terminal comprising . . . an output component’ in Claim 1.” Pet. 28–30 (citing Ex. 1203 ¶¶ 153–154, 158). Roku relies on Lyle for teaching the use of HDCP, which involves the exchange of a key between a transmitter and a receiver. See Pet. 71–72. In response, IOENGINE argues that “[t]he only alleged ‘terminal’ that [Roku] identifies in either reference is Alger’s monitor 147,” but according to IOENGINE, Alger’s monitor 147 “is merely an ‘output component’ with no processor or memory as required by every Challenged Claim.” Prelim. Resp. 26–27. IOENGINE argues that at the time of Alger’s disclosure, monitors such as monitor 147 did not have general-purpose computing capabilities that could facilitate a key exchange. Id. at 27 (Ex. 2001 ¶ 88).” slip op. at 15
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - ROKU, Inc.Institution deniedPTAB · May 5, 2023 · IPR2022-01552 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 17–21, 25–35, 59–69, 85–89, and 93–99 because the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Ex. 2011, 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential)). Roku’s stipulation, however, falls far short of a Sotera-type stipulation that would bar Roku from pursuing any grounds in the parallel district court proceeding that could have reasonably been raised before the Board. Thus, while Roku’s stipulation would prevent some overlap between this proceeding and the parallel district court proceeding, the scope of the stipulation does not rise to the level contemplated in the Fintiv Memo. Thus, although we find that the fourth Fintiv factor weighs somewhat against discretionary denial of institution, this does not end our analysis because Roku has declined to submit a Sotera-type stipulation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “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.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“In particular, we find it a close issue whether Ozawa discloses a “portable device” as recited in unchallenged independent claims 1, 39, and 73, which is also part of the challenged dependent claims. In claims 1 and 39, the term “portable device” is introduced in the preamble and appears throughout the claims. See Ex. 1101, 32:46–33:30, 36:32–37:11. In claim 73, a “portable device” is recited as an element of the claimed system. See id. at 39:44–40:20. In its Petition, Roku assumes, for its arguments, that the claim preambles, including the term “portable,” are limiting. See Pet. 24, 27–28. In its Preliminary Response, IOENGINE argues that “[t]he term ‘portable device’ is limiting because it provides antecedent basis for 11 instances in the body of claim 1,” and because the specification specifically focused on portability as an important feature of the invention. Prelim. Resp. 11–13. We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The 9 IOENGINE erroneously identifies the Preliminary Infringement Contentions as Exhibit 1116 rather than Exhibit 1118. evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00133 · APJ Ken B Barrett · IPR · Institution
The Board denied institution under Fintiv because the advanced parallel litigation outweighed the stipulation, and the petition did not present compelling merits for any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree that Kobayashi provides scant details on the operation of its outer encoder, which Petitioner attempts to fill in with expert testimony on Hamming coders and matrix multiplication generally. See Ex. 1002 ¶¶ 28– 35, 65. Patent Owner, on the other hand, provides argument based on Kobayashi’s disclosure and Petitioner’s own characterization of that disclosure that appears, on this record, to contradict Petitioner’s arguments. Even if, hypothetically, we were to deem Petitioner’s showing on the record before us to be adequate under the lesser reasonable likelihood standard (again, a finding we do not make), we apply a higher compelling merits standard for our analysis of the sixth Fintiv factor, and find Petitioner has not met that higher standard. In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling.” slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,421,032 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00130 · APJ Amber L Hagy · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the advanced parallel litigation outweighed the stipulation and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling. Petitioner’s arguments for the dependent claims and the other grounds (including the ground based on the combination with McEliece) (Pet. 19–56) do not cure the above deficiencies. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims under any of the asserted grounds.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,116,710 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00131 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 3–18 and 22 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14
- BurdenNot reached
“Although we need not fully resolve these issues for our “compelling merits” determination, we note that Patent Owner makes several arguments that call into question whether Petitioner would ultimately succeed with its unpatentability challenges relative to its analysis for the recited “codeword.” Petitioner’s contentions hinge on its assertion that an ordinarily skilled artisan “would have understood that this encoded sequence I4 is a codeword because the output of an encoder such as Kobayashi’s precoder is a codeword.” Pet. 15 (citing Ex. 1002 ¶ 68).8 We agree with Patent Owner that Petitioner’s analysis appears to (1) rely on circular reasoning; and (2) run counter to Kobayashi’s disclosure of the inner encoder in Figure 8 as comprising both the precoder and duobinary signaling blocks. See Ex. 1005, 7:9–11, Fig. 8. We also have considered Dr. Valenti’s testimony that an ordinarily skilled artisan would have understood the output of Kobayashi’s precoder to be a codeword. See Ex. 1002 ¶ 45. In support of this testimony, Dr. Valenti cites only general background testimony on error control coding and Kobayashi’s use of “codeword” with respect to the Hamming encoder. See id. Yet Dr. Valenti’s background testimony does not address whether an ordinarily skilled artisan would have regarded a precoder alone to be an 8 Petitioner cites to paragraph 68 of Dr. Valenti’s declaration, but his more relevant testimony supporting this proposition is found at paragraph 45, which we discuss below. encoder. See id. ¶¶ 24–27. And Kobayashi’s characterizations regarding the output of the Hamming encoder, which is a different element, do not necessarily apply to the precoder, which is only a portion of Kobayashi’s inner encoder. See Ex. 1005, 7:50–8:2. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenges do not plainly lead to a conclusion that one or more claims are unpatentable. For purposes of our analysis under Fintiv, we weigh the merits as being neutral.” slip op. at 22
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,916,781 - PTAB · Jan 19, 2023 · IPR2022-01233 · APJ Neil T Powell · IPR · Institution
The Board denied institution of review of claims 1–10, 13, 14, 16, and 21 under § 314(a), finding the Fintiv factors decisively favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)8. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). However, we have discretion to deny a petition even if a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review of the ’071 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
- BurdenNot reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,814,071 - Nokia Of America Corporation / Ericsson Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00755 · APJ John D Hamann · IPR · Institution
The Board denied institution under § 314(a), finding the Fintiv factors favored denial and that the challenges to claims 14–19 were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, this factor weighs heavily in favor of exercising our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, we find that Petitioner’s arguments, and Dr. Fuja’s cited testimony, are not compelling. Accordingly, Petitioner’s showing as to independent claim 14 is less than a “compelling, meritorious challenge[].” In addition, claims 15–19 depend from claim 14, and Petitioner’s arguments for these dependent claims do not cure the above deficiencies for independent claim 14. Pet. 26– 31. Likewise, Petitioner’s arguments for dependent claims 15 and 18 for the remaining ground (Kotecha combined with R1-081126) do not cure the above deficiencies for independent claim 14. Pet. 31–34. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims for any of the asserted grounds. VII. CONCLUSION For the foregoing reasons, we exercise our discretion to deny the Petition. VIII. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no trial is instituted.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot reached
“We find that Petitioner’s arguments are not compelling. First, we have doubts as to whether Kotecha (i) teaches a scheme “which utilizes a CQI trigger, a particular MCS value, and other fields present in the uplink grant” or (ii) “encourages [one of ordinary skill in the art] to use fields in addition to the MCS field.” Pet. 23–24. Rather, it appears that Kotecha teaches in its discussion regarding using a CQI trigger and a particular MCS value that “different fields, other than the MCS field, may be reused according to [Kotecha’s] disclosure to clearly signal whether an uplink grant is for only CQI or CQI and data.” See Ex. 1004, 4:23–43 (emphasis added). Hence, Kotecha teaches using other fields in lieu of—not in addition to—the MCS field. Id. Moreover, Kotecha’s teachings regarding using “one or more fields” to indicate only CQI or CQI and data identify the CQI request and MCS fields, as examples, without identifying additional fields, nor requiring the use of these fields. See id. at 7:19–22, 8:15–20, Fig. 6. Thus, these teachings also do not provide compelling support for Petitioner’s arguments that Kotecha encourages adding a third field to the CQI request and MCS fields combination. Id. Second, we find uncompelling Petitioner’s argument that one of ordinary skill in the art “would have been motivated to try using the . . . (RB) assignment field as a further indication of whether to multiplex CQI with data,” which “is one of only seven other possible fields for [one of ordinary skill in the art] to consider.” Pet. 25. This argument is premised on Kotecha encouraging using a third field—and only a third field—in addition to the CQI request and MCS fields, which, as we discuss above, Kotecha does not. Rather, choosing any three, for example, of the nine fields in the uplink grant would yield 84 possible combinations. See Ex. 1004, 1:25–34 (listing nine fields); Ex. 1003 ¶ 78 (testifying that “Kotecha identifies nine fields in the uplink grant”). Yet more combinations are possible if combinations having other numbers of fields are employed. “[T]he breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013) (citing Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010)). Nor does Petitioner cite to any guidance provided in Kotecha about which combinations of fields would likely be successful in arguing that the claimed three field combination would have been obvious to try. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“[W]here a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.”).” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Third, we do not find compelling Dr. Fuja’s cited testimony, which in our view, and taken as a whole, risks using impermissible hindsight to reconstruct the invention of claim 14. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). For example, the testimony appears to be predicated incorrectly on Kotecha teaching using a third field (i.e., the resource assignment field) in addition to the CQI request and MCS fields, and the testimony instead tracks the claimed three field combination of claim 14. Ex. 1003 ¶¶ 77–79. Moreover, Dr. Fuja opines that “it would have been obvious for [one of ordinary skill in the art] to use the resource assignment field in the uplink grant in addition to the CQI request bit and the MCS field because doing so provides additional flexibility and greater efficiency at no additional cost.” Ex. 1003 ¶ 79. We find this testimony to be conclusory as there is no factual support underlying Dr. Fuja’s opinion that one of ordinary skill in the art would have found such to be obvious. Id. ¶¶ 77–83. Also, claim 14 recites more than just reusing the resource assignment field to indicate whether data should be multiplexed with the CQI report. Ex. 1001, 24:7–14. Rather, claim 14 also recites evaluating whether the indicated number of resource blocks “is smaller than or equal to a determined number of resource blocks.” Id. Kotecha does not teach this, nor does Dr. Fuja address it in a compelling way. See Ex. 1003 ¶¶ 77–83.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,385,239
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.