- Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00516 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the General Plastic factors, particularly factors 1–3, 5, and 6, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 58), which is almost three months after Petitioner filed the petition in IPR2024-00046. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00046 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 58), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00046. See General Plastic at 20.” slip op. at 15
Discretionary denialPatents in suitUS 10,951,680 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00517 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on its balanced assessment of the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 61), which is almost three months after Petitioner filed the petition in IPR2024-00043. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00043 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 61), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00043. See General Plastic at 20.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“our discretion to deny institution, factor 2 strongly favors exercising the discretion, and factors 4 and 7 are neutral. Therefore, based on a balanced assessment of these factors, we exercise our discretion to deny institution of an inter partes review. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 24
Discretionary denialPatents in suitUS 11,677,798 - Apple Inc. v. Koss Corp.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00188 · APJ Karl D Easthom · IPR · Institution
The Board denied institution of review of claims 1-22, 32-41, 47, and 49-62 under § 314(a), applying the General Plastic factors to Apple’s third petition; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“(‘Schrager’)—the primary reference that forms the basis of Grounds 1A–1D of the [’]680 Proceeding—before Bose filed IPR2021-00612 (a petition against related U.S. Patent No. 10,206,025) a day later on March 3, 2021.” Mot. 7. This contention does not specifically address what Apple knew or should have known at the time of filing of its second petition, which Apple filed after the filing of the Bose ’680 petition and after March 3, 2021. See id. In any event, Apple appears to admit that it knew of Schrader prior to filing its second petition on March 23, 2021. See id. In addition, Patent Owner introduces evidence that Apple knew or should have known about Schrager prior to filing of its first petition. See Prelim. Resp. 15 (showing “Petitioner had been aware of Schrager since at least 2014” (citing Ex. 2003; Ex. 2004) and identifying “over 100 times” Apple “had cited Schrager to the Office . . . in its own patent applications” (citing Ex. 2002)); 4 (citing Ex. 2002, 10–15 (web document listing Apple as assignee on multiple patents citing Schrager between 2014 and 2018)); Ex. 2003 (Information Disclosure Statement (IDS) filed by Apple listing Schrager in 2014); Ex. 2004 (IDS filed by Apple listing Schrager in 2016). Accordingly, this second General Plastic factor weighs in favor of exercising discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, and following Uniloc, we exercise discretion under 35 U.S.C. § 314(a) and deny institution.” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 15
Discretionary denialPatents in suitUS 10,469,934 - Apple, Inc. v. Koss Corp.Institution deniedPTAB · 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 · GrahamPatents in suitUS 10,469,934 - Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution deniedPTAB · 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 denialPatents in suitUS 7,047,196
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.