- Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Directv, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Jan 22, 2025 · IPR2024-01061 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of prevailing, and denied joinder to the non-instituted DISH Network IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the same reasons discussed in our Decision Denying Institution of the DISH Network IPR, Paper 14, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder is only permissible, however, when the inter partes review Petitioner seeks to join has been instituted. 35 U.S.C. § 315(c). As the DISH Network IPR has not been instituted, we do not grant Petitioner’s Motion for Joinder.” slip op. at 3
NonePatents in suitUS 7,889,759 - Toyota Motor Corp. / Kia Copr. v. Emerging Automotive LLCInstitution deniedPTAB · Nov 21, 2024 · IPR2024-00785 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Zaid disclosed or taught the claimed vehicle-unlocking request, for claims 1–7, 10–15, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Additionally, Petitioner specifically argues that Zaid discloses this limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124). Thus, after review of the arguments and evidence, we find that Petitioner has not provided sufficient explanation and supporting evidence that Zaid discloses or teaches “a request from the mobile device for unlocking of the vehicle” as required by limitation [1e]. Accordingly, based on the current record, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that independent claim 1 is anticipated by or rendered obvious in view of Zaid.” slip op. at 25
- Expert testimonyDecided for patent owner
“limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,407,026 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - Cox Communications, Inc. v. Entropic Communications, LLCInstitution deniedPTAB · Sep 25, 2024 · IPR2024-00579 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Cox did not show a reasonable likelihood that claims 18 and 19 were unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“The proposed level of the ordinarily skilled artisan in the instant proceeding is similar to that adopted in the ’446 IPR proceeding. Here, Petitioner has not argued that the already-adopted level is wrong or explained why any differences in proposed skill levels impact the outcome of this proceeding. For purposes of this Decision, we maintain our determination to adopt the proposed level of skill in IPR2024-00446 as that skill level is reasonable and consistent with the ’775 patent specification and the prior art. Our analysis and conclusions herein, however, would be the same using Petitioner’s proposed level of the ordinarily skilled artisan in the instant proceeding.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“disclosure. In particular, Schain discloses that Figure 3, relied on by Petitioner, “illustrates the logical architecture of a dual bridge” of broadband gateway 135. Ex. 1005 ¶ 45 (emphasis added). Schain also discloses that Figure 3’s “logical architecture features two bridges, one for the broadband modem portion (a cable bridge 315) and one for the residential gateway portion (a local bridge 345) of the broadband gateway 135.” Id. (emphasis added). Schain’s disclosure is of a logical separation, that is a separation in software. See, e.g., id. at 45. Claim 18, however, recites “a data networking engine implemented in a first circuit that includes at least one processor,” “a cable modem engine implemented in a second circuit that includes at least one processor,” and limitation 18d, which is “the second circuit being separate from the first circuit.” Petitioner has not shown that Schain’s disclosure of its logical architecture teaches or suggests “the second circuit being separate from the first circuit” (emphasis added). Petitioner also relies on Schain’s disclosure of “a separate driver layer” that is “[b]eneath each bridge.” Pet. 30 (citing Ex. 1005 ¶ 46; Ex. 1003 ¶ 76). Schain discloses that “[t]he driver layer typically includes both hardware and software portions.” Ex. 1005 ¶ 31. Schain discloses that “[t]he hardware portion of the drive layer” is “the physical connection, such as Ethernet connections, USB connections, etc.” Id. Schain does not describe that the hardware portion of the driver layer includes a processor.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“engine’ is not shown as part of its line card 731.” Prelim. Resp. 51. Patent Owner argues “[t]o bridge this gap,” Petitioner “offers only a conclusory assertion that ‘it would be a trivial modification to have the DOCSIS processor 855 of line card 731 perform this function.’” Id. at 52 (citing Ex. 1003 ¶ 200). Patent Owner argues “missing limitations . . . simply cannot be added in an obviousness analysis based on a bare assertion of trivial[ity].” Id. Patent Owner argues “it is well-settled that such missing limitations cannot be supplied by conclusory statements about ‘basic knowledge’ or ‘common sense.’” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); DSS Tech. Mgmt. v. Apple Inc., 885 F.3d 1367, 1374–75 (Fed. Cir. 2018). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (2019), (“Consolidated Practice Guide” or “CTPG”) 36.3 Limitation 18i recites “the DOCSIS MAC processor configured to process downstream PDU packets and forward the processed packets directly to the data networking engine without the involvement of the DOCSIS controller in order to boost downstream throughput.” Petitioner has not shown that any asserted prior art reference teaches or suggests limitation 18i. Petitioner may not rely on the testimony of Dr. Martin to bridge this gap. After consideration of the arguments and the evidence of record, we determine that Petitioner has not shown sufficiently that limitation 18i is 3 The CTPG is at https://www.uspto.gov/TrialPracticeGuideConsolidated. taught or suggested by Perlman or Crocker and Petitioner does not rely on Fox for this limitation. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 18 is unpatentable under 35 U.S.C. § 103 as obvious over Perlman, Crocker, and Fox.” slip op. at 26
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,775 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 9, 2024 · IPR2024-00445 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims. And as a result, based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’682 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 24
- BurdenNot shown unpatentable
“testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“After studying Cioffi, in view of Petitioner’s contentions and the testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Pet. 17 (citing Ex. 1102 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst-case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682 - DISH Network LLC v. Entropic Communications, LLCInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00462 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on claims 1–3, failing to support a motivation to combine Carhart and Grube.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“bandwidth, we agree with Patent Owner that this contention is unsubstantiated. Although there is sufficient evidence that Grube’s common bit-loading scheme improves upon and benefits infrastructures utilizing telephone lines, Petitioner provides no basis, or minimal at best, to bridge those advantages obtained in the context of Grube’s system to Carhart’s BCN. The evidence Petitioner cites from Grube and Dr. Williams (Ex. 1010, 2:48–3:17, 3:34–42, 4:18–26, 6:54–67, 7:13–8:14, 14:33–46, 34:45– 52, 57:29–38, Fig. 8; Ex. 1004 ¶¶ 92–111) either describes how Grube’s bitloading scheme works in an infrastructure utilizing telephone lines or it represents that the bit-loading scheme is able to satisfy the need for a one-tomany and/or many-to-one communication system within an infrastructure that utilizes existing telephone wires. Dr. Williams’s testimony provides little, if any, persuasive information to bridge the gap between how Grube’s bit-loading scheme’s usefulness within a telephone line infrastructure translates to a skilled artisan into adding similar value within a BCN infrastructure; instead, Dr. Williams largely mirrors the naked assertions Petitioner makes and cites to the same evidence without further substantive reasoning. 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.”). Likewise, no underlying support or reasoning from either Petitioner or Dr. Williams is provided to substantiate the claim that “Grube represents a suitable, known technique for orchestrating digital communication between a central unit and multiple remote units in networks like Carhart’s” (Pet. 16). Grube suggest that its technique eliminates high data rate transmission path requirements to expand the usefulness and areas in which communications systems may be established. Ex. 1010, 57:29–38. Petitioner offers no basis for us to determine Grube’s technique for eliminating high data rate transmission path requirements would have been a known technique by skilled artisans for orchestrating digital communication between nodes within a network like Carhart’s that necessarily depend on the high data rate transmission paths that a BCN provides. Left unfulfilled is any clear explanation for why or how Grube’s bit- loading scheme would have actually improved or benefited Carhart’s system, which Petitioner admits already teaches a network with a centralized computer that uses existing coaxial cables to communicate with remote stations (Pet. 10). For example, Petitioner does not identify a single known shortcoming with Carhart’s one-to-many and/or many-to-one communication system infrastructure that a skilled artisan would recognize may be overcome with Grube’s bit-loading scheme. To the contrary, as Patent Owner notes, rather than needing a technique Grube teaches to address the lack of “adequate bandwidth” provided by telephone wires (Ex. 1010, 2:1–3), Carhart teaches that its BCN provides excess unused bandwidth (Ex. 1009, 8:36–38). Nor does Petitioner explain why or how a skilled artisan would have viewed Grube’s bit-loading scheme to be superior to the schemes Carhart utilizes to form a multi-casting infrastructure. Moreover, Petitioner’s admission Carhart teaches that teaches a BCN with a centralized computer that communicates with remote stations, further weakens Petitioner’s position because it shows Carhart’s infrastructure already accomplishes the same goal that Petition proposes a skilled artisan would have sought to achieve through the proposed modification. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (stating that the Board’s” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“The last point we make about Petitioner’s reasoning is that it lacks any substantive support for why a skilled artisan would have chosen to configure Carhart’s node to have the functionality Grube describes for its primary site. Here again, Petitioner simply concludes that a skilled artisan would have found it obvious to have Carhart’s nodes act as Grube’s primary site without any evidence that such a correlation was known by skilled artisans or any analysis regarding the roles Carhart’s nodes and Grube’s primary site play within their respective infrastructures that would have led to that choice. Pet. 20–21. We are mindful that “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American–Maize Prods. Co., 840 F.2d 902, 907 (Fed.Cir.1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Petitioner’s failure to provide any clear explanation backed by supporting evidence for why a skilled artisan would have selected Carhart’s nodes to modify and perform as the primary site when implementing Grube’s bit-loading scheme suggests Petitioner improperly relied on hindsight reasoning to piece together elements to arrive at the claimed invention. For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why it would have been obvious to modify a node in Carhart, in view of Grube, to transmit a probe signal to the other respective nodes and determine a common bit-loading modulation scheme from the various bit-loading modulation schemes determined and provided by each of the other respective nodes that received a probe signal. And as a result, we find Petitioner has not demonstrated a reasonable likelihood of proving that one of ordinary skill in the art would have been motivated to combine Carhart and Grube as proposed. This failing undermines Petitioner’s showing as to independent claims 1–3 for all grounds.” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Pet. 9 (citing Ex. 1004 ¶¶ 24–25). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’759 patent specification and the prior art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,889,759 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00578 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, and 9 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we deny institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: The ’826 Patent describes and claims aspects and functionality of cable and satellite television signal processing and communication systems. As of the alleged September 8, 2011 priority date, a person of ordinary skill in the art (“POSITA”) of the ’826 Patent would have had at least: i) a Bachelor of Science in electrical engineering or an equivalent subject and three or more years of experience working in the field of cable and/or satellite signal processing and communication systems; ii) a Master’s in electrical engineering or an equivalent subject and one or more years of experience working in the field of cable and/or satellite television signal processing and communication systems; or iii) a Ph.D. in electrical engineering or an equivalent subject and at least some experience working in the field of cable and/or satellite television signal processing and/or communication systems. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 9 (citing Ex. 1003 ¶¶ 30–31) (internal citation omitted). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties indicate that the district court in the Charter case (2:22-cv-00125) construed “network management messages” in the claims of the ’826 patent to mean “messages which report on the network based on the measured characteristics.” Pet. 10 (citing Ex. 1009, 29); Prelim. Resp. 10. Petitioner contends this construction is consistent with the ordinary and customary meaning of the claim language. Pet. 25. Patent Owner asserts that, in the Cox case (2:23-cv-01049), the parties agreed that “network management messages” should be given its plain and ordinary meaning. Prelim. Resp. 10 (citing Ex. 2001, 2). Patent Owner asserts that its arguments “do not turn on the construction of ‘network management messages’ so there is no need to construe that, or any other, term of the ’826 Patent claims at this stage of the proceeding.” Id. As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10
- BurdenNot shown unpatentable
“While Petitioner mentions portions of Renken that it considers relevant to limitation 1h, Petitioner does not explain how it reads each aspect of limitation 1h on Renken. For example, Petitioner does not identify what in Renken corresponds to the “network management messages,” what corresponds to the “measured characteristic of the received signal” that “is different than said network management messages,” and what discloses that the “measured characteristic” is the basis for “controlling transmission of the network management messages” from the “receiver” “back to the headend.” b) Conclusion for Claim 1 Accordingly, Petitioner has not shown a reasonable likelihood to prevail in demonstrating that Renken in view of the general knowledge of a POSITA discloses limitations 1a and 1h of claim 1.7 Thus, we do not reach the parties’ contentions concerning other claim limitations or Renken’s priority date.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 9,825,826
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.