• Resmed Corp. v. Cleveland Medical Devices, Inc.Institution denied
  PTAB · Jun 10, 2025 · IPR2025-00157 · APJ Cynthia M Hardman · IPR · Institution

  The Board denied institution of ResMed’s challenge to claims 1–3, 6, and 12–20 under General Plastic because the follow-on petition followed an earlier petition challenging the same claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “We find that in view of Petitioner’s prior petition, this factor favors discretionary denial. Code200 is distinguishable. There, the Board exercised its discretion to deny institution of the earlier petitions under 35 U.S.C. § 314(a) based on Fintiv. Code200, Paper 18, 2 n.3. Here, the Board did not discretionarily deny the previous petition, but rather denied it because Petitioner failed to carry its burden of demonstrating a threshold requirement for post-grant review, namely that the patent is eligible for postgrant review. See PGR Dec. 9–10, 24. In evaluating the eligibility issue, the Board thoroughly addressed the merits of Petitioner’s arguments that the ’284 patent claims lack adequate written description and enablement support in the priority applications such that the claims are not entitled to any of the pre-2013 priority dates listed on the face of the patent. See PGR Dec. 10–24. This issue extensively overlapped with Petitioner’s grounds of unpatentability based on lack of written description and enablement in the post-grant petition, which Petitioner included together with prior art challenges. See PGR Dec. 6–7. As such, contrary to Petitioner’s argument, it did have “the opportunity to pursue a decision on the merits,” but failed to carry its burden to secure postgrant review. Prelim. Reply 1 (emphasis added).” slip op. at 8

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

    “institute review. An inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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). For the reasons explained below, we exercise our discretion to deny institution of this follow-on petition because Petitioner previously filed a post-grant review petition challenging the same claims of the same patent.” slip op. at 2

  • BurdenNot reached

    “III. REMAINING ISSUES Because we deny the Petition under 35 U.S.C. § 314(a) and General Plastic, we need not reach the parties’ additional arguments regarding discretionary denial or the merits of Petitioner’s unpatentability challenges.” slip op. at 15

  Discretionary denial
  Patents in suitUS 11,602,284
• Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution denied
  PTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution

  The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).

  RulingsInstitution decision

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

    “The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6

  • BurdenDenied

    “Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14

  • Skill levelNot reached
  Claim constructionDiscretionary denialcites Markman
  Patents in suitUS 9,333,946
• Guardant Health, Inc. v. University Of WashingtonInstitution denied
  PTAB · Jan 31, 2023 · IPR2022-01388 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution of review of claims 1–27, exercising § 314(a) discretion under General Plastic because the follow-on petition used lessons from earlier petitions and had weak merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “to study a patent owner’s preliminary response to, or the Board’s institution decision on, a prior petition, such that the petitioner would have been in a position to gain a benefit from having that information before filing another petition. General Plastic, Paper 19 at 17. Under this analysis, we disfavor a follow-on petition that “us[es] our decisions as a roadmap.” Id. Petitioner filed this third Petition on August 10, 2022, after Patent Owner filed its Preliminary Responses in the ’449 and ’450 IPRs on May 6, 2022, and after we issued our decisions denying the petitions in those cases on August 1, 2022. 6 Craig et al., Identification of Genetic Variants Using Bar-Coded Multiplexed Sequencing, 5 NATURE METHODS 887–93 (2008) (Ex. 1036, “Craig”). 7 Shiroguchi et al., Digital RNA Sequencing Minimizes Sequence Dependent Bias and Amplification Noise with Optimized Single-Molecule Barcodes, 109 PROC. NATL. ACAD. SCI. 1347–52 (2012) (Ex. 1010, “Shiroguchi”). Petitioner nevertheless argues that we should institute review of this third Petition because “the Board never reached the merits of patentability under the prior petition[s],” and Petitioner “derived few if any benefits” from seeing Patent Owner’s preliminary responses and our decisions denying institution in those cases. Pet. 62. We disagree. Below, to explain that this third Petition indeed uses our prior decisions as a roadmap, we: (1) summarize Kinde’s teachings; (2) summarize the parties’ arguments and our decision denying institution in the ’450 IPR; and (3) discuss Petitioner’s arguments in this third Petition.” slip op. at 12

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

    “Petitioner that this factor favors institution, it would not outweigh considerations under the other six factors, all of which favor denying institution. This is so especially in view of the weak merits, as discussed below. H. The Merits of This Third Petition Are Weak In this third Petition, Petitioner relies on an alleged “Craig Variation” of Kinde’s method. See, e.g., Pet. 10, 26, 35–36. According to Petitioner, “all claims encompass the obvious variation of Kinde’s method utilizing barcoded adapters (i.e., the Craig Variation).” Id. at 26. Patent Owner contends the so-called Craig Variation is “imaginary.” Prelim. Resp. 7. Putting aside that issue, we found in at least three related IPR proceedings that Petitioner did not explain sufficiently why an ordinarily skilled artisan would have introduced Craig’s adapters, which comprises exogenous barcodes, to Kinde’s endogenous method. See IPR2022-00816, Paper 16, 13–15; IPR2022-00935, Paper 11, 32–35; IPR2022-01159, Paper 17, 10–14. In the current Petition, Petitioner relies on substantially the same arguments regarding modifying Kinde’s endogenous UIDs with Craig’s adaptors. In other words, the merits of this third Petition are weak. In sum, the weakness in the merits of this third Petition further favors denying institution.” slip op. at 25

  Discretionary denial
  Patents in suitUS 10,689,699
• Apple, Inc. v. Koss Corp.Institution denied
  PTAB · Oct 13, 2021 · IPR2021-00693 · APJ David C Mckone · IPR · Institution

  The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the signal-strength claims and declining the duplicative remaining claims for efficiency.

  RulingsInstitution decision

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

    “Neither Seshadri nor Seshadri-818 teaches transitioning between sources of digital audio. Seshadri teaches transitioning between two types of wireless communication (e.g., from piconet to WLAN) in order for headphones (wireless headset 10) to continue communicating with the same source (e.g., cellular telephone 36) when the signal strength of the first communication type (e.g., piconet) becomes too low. Ex. 1007 ¶ 42. In another example, Seshadri teaches headset 10 transitioning between one device, wire line telephone 37, and another device, cellular telephone 36. Id. ¶ 44. However, cellular telephone 36 is connected via another path (e.g., the WLAN) to wire line telephone 37 and essentially is acting as a repeater to communicate the telephone information from its source, wire line telephone 37, to headset 10. Id. It is in this context that Seshadri teaches that “headset 10 extends the mobility of its user, extends the range of headset use and expands on headset functionality while preserving privacy and security by seeking service from base units to which it may be registered.” Id. In other words, by using cellular telephone 36 as an intermediary, headset 10 can travel farther away from wire line telephone 37, the source of the phone call, and still communicate with it. This is not, however, an example of transitioning between two sources, as required by claim 58. Wire line telephone 37 still is the only source with which headset 10 communicates in this example. Seshadri-818’s teaching is similar to this second example in Seshadri. Although Seshadri-818 describes transitioning headset 12 from one device to another (e.g., from wire line telephone 14 to cellular telephone 22) based on signal strength, the second device (cellular telephone 22) is used merely as an intermediary between headset 12 and wire line telephone 14 so that the headset can continue to communicate with the wire line telephone, the source of the data. Ex. 1013 ¶¶ 11, 26, 49–50. Again, it is in the context of the second device acting as an intermediary between a headset and a single source that Seshadri-818’s invention “extends the mobility of its user, extends the range of headset use and expands on headset functionality.” Id. ¶ 26 (“Thus, a logical connection is established between the universal wireless headset 12 and the wire line telephone 14 via the cellular telephone 22 and access point 24.”). See also id. ¶¶ 11 (“[A] logical connection may be established between the new device and a host device supporting the communication,” with the benefit that “a universal wireless headset is provided that extends the mobility of the user, extends the range of the headset and expands on its functionality.”), 50 (“This enables the universal wireless headset to roam within the local area network and maintain its wireless headset functionally with one of its host devices as it roams.” (emphasis added)).” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied

    “The Petition further challenges claims 1–3, 5, 10, 11, 14–16, 19, 23– 25, 28, 32–36, 39, and 42. Pet. 1–2. As noted above, however, each of these claims is challenged in the ’592 IPR on nearly identical grounds. Thus, it would be a waste of resources to institute a duplicative trial on these claims when Petitioner has not shown a reasonable likelihood of success in its challenges to the non-overlapping signal strength claims. Accordingly, we exercise discretion and do not institute a trial on this Petition, which Petitioner filed to challenge the signal strength claims. See supra § II.G. 5. Summary Petitioner filed this Petition to challenge the signal strength claims, claims 4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58– 62. See supra § II.G; Notice 2–3. For the reasons addressed above in connection with illustrative signal strength claim 58, Petitioner does not show a reasonable likelihood of prevailing on any of the signal strength claims. But for the signal strength claims, this Petition challenges the same claims as the ’592 petition. See supra § II.G; Notice 2–3. Accordingly, in the interest of efficiency and not duplicating the trial based on the ’592 petition, we exercise our discretion and do not institute a trial on this Petition.” slip op. at 29

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

    “This, however, ignores Petitioner’s asserted evidence of reasons to combine the references, namely, to maintain a connection between a headset and a host while roaming within a WLAN network that is wider than the piconet that could be established between the headset and that host. Pet. 31 (citing Ex. 1007 ¶ 44; Ex. 1013 ¶¶ 26, 50; Ex. 1003 ¶ 103). Specifically, Petitioner relies on Seshadri’s and Seshadri-818’s similar “use-case[s] in which this transition between two different devices would be useful,” namely the examples in which a cellular phone is used as an intermediary between a headset and a wire line telephone, with the wire line telephone serving as the single source. Pet. 31–32 (citing Ex. 1007 ¶ 44; 8 The Dissent also argues that a skilled artisan would have made the combination because the headset receiving some audio would have been better than it receiving no audio. We do not read the Petition as having made this argument. Ex. 1013 ¶ 26).9 Dr. Cooperstock repeats this reasoning in his testimony. Ex. 1003 ¶¶ 104–105. Thus, Petitioner’s asserted evidence of reasons to combine, taken directly from the two Seshadri references, describes the benefits of maintaining the connection between a headset and a single source (i.e., the host device), and transitioning between devices to maintain that connection. Petitioner does not present persuasive evidence of reasons to transition a headset from playing digital content from one source to playing digital content from another source while roaming within a WLAN, e.g., transitioning among a phone call on a cellular phone, a podcast on a PDA, streaming music on a PC, and an audio book on a laptop computer as the user moves from room to room in their house, changing proximity of the headset to the various devices. Even Petitioner’s citation to Haupt does not provide such evidence. As noted above, Petitioner’s theory for claim limitation 58[h] (“wherein the processor is configured to, upon activation of a user-control of the headphone assembly, initiate transmission of a request to a remote, network-connected server that is in wireless communication 9 Petitioner’s argument, cited by the Dissent, that the method of Seshadri- 818’s Figure 8 “would ensure that the headset only transitions to a better connection and therefore improves audio transmission to the headset,” PO Resp. 30, is still in the context of maintaining a connection between a headset and a single source. In particular, the testimony of Dr. Cooperstock cited to support this argument continues that “[n]otably, Seshadri-818 teaches making a ‘determination’ about ‘which device, or access point, to hand the communication off to’ and discloses an example of ‘determin[ing] that device K is to facilitate the ongoing communication.’” Ex. 1003 ¶ 101 (quoting Ex. 1013 ¶ 40). Paragraphs 39 and 40 of Seshadri-818 describe communication between headset 12 and device C, first using access point H, which has a logical connection to device C, and second using device K, which has a logical connection to device C. with the mobile, digital audio player”) has Seshadri’s PDA 30 and cellular telephone 36 both communicating and receiving audio files from the same server (i.e., the same source) “in the same manner as the operating element BE taught by Haupt.” Pet. 26. Here, Petitioner refers to the server, not either PDA 30 or cellphone 36, as “a source for the audio streams to which Seshadri teaches the base units 16 have access.” Id. at 26–27.” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner also constructs an “alternative example” or “additional configuration” in which Haupt’s headset hands off streamed audio from one playback device to another based on signal strength, e.g., “transition[ing] from playing streaming audio (e.g., internet radio) from Seshadri’s cellphone 36 to Seshadri’s PDA 30 as the headphones/headset move out of piconet range of the cellphone 36 and into piconet range of the PDA 30.” Pet. 32–33 (citing Ex. 1003 ¶ 106). Petitioner’s alternative theory rests on Dr. Cooperstock’s testimony which, in turn, merely repeats the Petition’s arguments without providing any basis for the testimony. Ex. 1003 ¶ 106. Here, Petitioner appears to rely on Seshadri’s general teaching that a headset could communicate with any one of several devices (Ex. 1007 ¶ 43 (“Wireless headset 10 may establish a piconet with any one of the devices 30–37.”)); that more than one of these devices would have been capable of transmitting digital audio content to the headset (id. ¶ 67); and that Seshadri-818 includes a general teaching of transitioning from one device to another based on signal strength (Ex. 1013 ¶ 50). A user wearing the headset, then, would roam from device to device, giving the user wider range of movement. The Dissent appears to accept this reasoning.8” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,469,934
• Google LLC v. Videoshare LLCInstitution denied
  PTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution

  The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.

  RulingsInstitution decision

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

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • BurdenDecided for patent owner

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 10,362,341
• Eik Engineering SDN. BHD. v. Wilco Marsh Buggies & Draglines, Inc.Rehearing denied
  PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3

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

    “The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2

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

    “asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10

  • Other 314aInstitution denied discretionary otherDenied

    “Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 6,918,801
• Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution denied
  PTAB · Oct 10, 2018 · CBM2018-00033 · APJ Karl D Easthom · CBM · Institution

  The Board denied institution of CBM review of claims 14–52, exercising discretion because Comcast advanced a conflicting claim construction in concurrent proceedings.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “Petitioner argues the Board should not exercise its discretion to deny this CBM Petition based on the ’344 and ’345 Petitions, because “the grounds for unpatentability identified in this petition are different than the grounds for unpatentability identified in the IPR petitions—indeed, the grounds for unpatentability raised here are not permitted in an IPR proceeding,” and Patent Owner had “not yet filed a preliminary response to the pending IPR petitions challenging the ’196 Patent.” Pet. 4, n.1 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (identifying relevant factors)). Nevertheless, as Patent Owner argues, General Plastic cites a non-exhaustive list of factors. See Prelim. Resp. 5–6. Petitioner fails to explain why it filed this CBM 2 “Congress enacted § 112, ¶ 6, in response to Halliburton,” 329 U.S. at 1. Warner–Jenkinson Co. Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Petition (filed April 2, 2018) about three and a half months after it filed the ’344 and ’345 Petitions (both filed Dec. 19, 2017) with competing claim construction arguments that impact central aspects of both trials. Petitioner’s implied argument that Congress only authorized certain grounds for inter partes reviews and limited other grounds to CBM reviews (e.g., § 112, ¶ 2), fails to explain sufficiently why the Board should entertain Petitioner’s new claim construction that potentially would impact central and major aspects of the concurrent ’344 and ’345 IPRs instituted based on a prior contradictory claim construction advanced by Petitioner.” slip op. at 10

  • Other 314aInstitution denied discretionary otherDenied

    “A potential consequence of instituting the instant CBM based on Petitioner’s arguments related to the scope issue raised by Patent Owner involves at least raising the related issue of whether to terminate the ’344 and ’345 IPRs. See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013- 00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). Petitioner does not propose terminating the ’344 and ’345 IPRs in the event that we decide to institute the instant CBM proceeding. Without terminating the ’344 IPR and ’345 IPR, instituting the instant CBM proceeding based on Petitioner’s means plus function arguments would result in different Board panels proceeding under two contradictory claim constructions on a central issue––i.e., for the same claim term of the same patent, involving all of the challenged claims in the CBM and a slight majority of the collectively challenged claims in the ’344 and ’345 IPRs. The Board’s reviewing court disfavors conflicting “reasoning on a point . . . central to [the Board’s] analysis” absent an adequate explanation for the conflict. See Emerson Electric Co. v. Sipco, LLC, No. 2017-1866, 2018 WL 4145081, slip op. at *3 (Aug. 29, 2018 Fed. Cir.) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”) (nonprecedential); Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017) (“[W]here a panel simultaneously issues opinions on the same technical issue between the same parties on the same record, and reaches opposite results without explanation, we think the best course is to vacate and remand these findings for further consideration.”). As noted above, Petitioner does not present an adequate explanation for the contradictory claim constructions. Whether a recitation constitutes a means-plus-function element does not depend on whether the claim is construed in an inter partes review or a covered business method patent review.” slip op. at 8

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

    “Accordingly, based on the particular circumstances involved as discussed above, we decline to decide whether to adopt Petitioner’s means plus function claim construction position asserted here. On one hand, if we decided to adopt it and institute a CBM review on that basis, concurrent trials would proceed on diametrically opposed claim construction positions––unless the panel in the ’344 and ’345 IPRs decided to terminate those trials based on our adoption of the diametrically opposed claim construction asserted here. At the least, even without a termination the ’344 and ’345 IPRs, the diametrically opposed positions would infiltrate the three proceedings and raise collateral issues, undermining the Board’s resources and effort “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b). On the other hand, if we decide Petitioner’s showing here lacks sufficient support on the merits for purposes of a CBM review, a decision denying institution may serve to advise the parties on this limited record that Petitioner’s means plus function claim construction position in the ’344 and ’345 IPRs appears to be correct even though no final decision has been reached there yet.” slip op. at 11

  • BurdenNot reached

    “As presented, Petitioner advances the second and third theories of unpatentability as contingent upon not adopting its central argument that “program steps” represents a means plus function term. Because we do not decide the issue of whether “program steps” constitutes a means plus function term, we decline Petitioner’s invitation to investigate further its second and third contingent theories. In addition, given the prominence of the means plus function claim construction issue raised by the parties, in the event we were to decide to institute the instant CBM proceeding, the means plus function issue likely would dominate the CBM trial and may impact the ’344 IPR and ’345 IPR, as discussed above.” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,047,196
• LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Institution denied
  PTAB · Mar 24, 2016 · IPR2015-01987 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 16–28 because the petition did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. 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.”). On this record, Petitioner is not reasonably likely to show that GSM 04.60’s description of establishment of a TBF teaches a request message “indicating at least one requested quality of service parameter associated with the requested communication connection,” as recited in claim 16. Each of independent claims 20, 24, and 25 includes a limitation substantially similar to claim 16’s “indicating at least one requested quality of service parameter associated with the requested communication connection.” For the same reasons, GSM 04.06’s disclosure of TBF establishment does not teach these similar limitations of claims 20, 24, and 25.” slip op. at 12

  • BurdenNot shown unpatentable

    “We agree with Patent Owner. Claim 16 requires that the apparatus be encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner responds that “neither Petitioner nor its declarant offer any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. 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.”).” slip op. at 12

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

    “encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16. We cannot conclude, on this record, that Petitioner is likely to show that the GSM/GPRS Specifications or Olofsson teach an apparatus encoded to “receive from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter,” as recited in claim 16. The remaining independent claims have analogous limitations that Petitioner, for the same reasons, has failed to show in the Prior GSM/GPRS Specifications or Olofsson. Specifically, independent claim 20 recites “a receiver configured to receive from the network element, a channel coding scheme corresponding to said at least one quality of service parameter”; independent claim 24 recites “receive from said decision making device at least one of a channel coding and interleaving scheme corresponding to said at least one quality of service parameter”; and independent claim 25 recites “receiving from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter.”” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham

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.