• Google LLC v. Cellular South, Inc.Institution denied
  PTAB · Nov 21, 2025 · IPR2025-00877 · APJ William V Saindon · IPR · Institution

  The Board denied institution for claims 1–11 because the Zhao-Kouzani combination did not sufficiently show a fractal representation based on landmarks.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’853 patent is unpatentable, and we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “generally known in the art, and that this is acknowledged by the ’853 patent. Pet. 40–41 (citing, e.g., Ex. 1001, 15:40–44). Petitioner asserts that Kouzani touts the benefits of fractal models and that it would have been obvious to use Kouzani’s fractal model as the object model in Zhou. Pet 44 (asserting that “[a] person of ordinary skill would have therefore been motivated to implement Kouzani’s techniques in Zhao’s system”); see also id. 42–45. (entire argument). Patent Owner argues that Kouzani’s fractals would not result in the claimed limitation. Prelim. Resp. 21–23. In particular, Patent Owner points out that Kouzani’s fractals use a block-based fractal system, which do not include “a representation of the object based on landmarks associated with the object” as required by claim 1. Id. at 21–22. Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13 (quoting in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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 6

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,126,853
• Røde Microphones, LLC / Freedman Electronics Pty Ltd. v. Zaxcom, Inc.Institution denied
  PTAB · Sep 30, 2025 · IPR2025-00557 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the “master timecode generator” produces a signal that “controls” another timecode generator. See Prelim. Resp. 19 (citing a dictionary definition of “master” as “[one] that has control over another or others,” Ex. 2019, 3). We see no basis, however, to limit the claim term to a particular type of control. Patent Owner points to Figure 6 of the ’444 patent where “the master timecode generator creates master timecodes that are used to control the speed of the local timecode generator to ensure the two timecode generators are synchronized.” See Prelim. Resp. 19‒20 (citing Ex. 1001, col. 17, ll. 9‒16, Fig. 6). But Figure 6 merely depicts an exemplary “process for recording audio and for replaying and re-recording segments of missed audio in accordance with one embodiment of the present invention.” See Ex. 1001, col. 3, ll. 15‒17. Further, the Specification describes the exemplary embodiment of Figure 6 as a master unit providing master timecodes to a local audio device, which “synchronizes (e.g., jam syncs) its respective on board local timecode generator with the master timecodes,” but does not specify exactly how the master unit exercises control. Id. at col. 17, ll. 9‒17. Thus, we do not include any particular control mechanism (e.g., changing the speed of the local timecode generator) in our interpretation at this time. Based on the record presented, we interpret “master timecode generator” as “a producer of a master time reference signal that controls at least one other timecode generator” and “master timecode” as “a time reference signal used to synchronize at least one device.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not sufficiently shown that Strub teaches or suggests limitation 1[A]. Petitioner relies on Strub’s disclosure of a “master” recording unit as the claimed “remote receiver.” Pet. 34 (citing Ex. 1003, col. 38, ll. 29‒39). The cited portion of Strub is reproduced below: Data other than recording data can also be exchanged between recording units. For example, it may be desirable to coordinate the recordings obtained by recording units so that frames of visual recording data obtained by different recording units are temporally synchronized (e.g., so that a frame begins at the same time for each recording unit). This can be done by transmitting a synchronization pulse from a “master” recording unit to each of the other recording units (“slave” recording units). (Synchronizing analog visual data acquisition devices in this way is referred to as “genlocking.”) Ex. 1003, col. 38, ll. 29‒39. As argued by Patent Owner (see Prelim. Resp. 36), the cited procedure involves synchronizing frames of visual recording data, not audio recording data. Petitioner has not disputed Patent Owner’s assertions that the described “genlocking” technique is a video synchronization technique that does not apply to or affect the synchronization of system clocks or audio timestamps and has no bearing on audio synchronization. Nor does Petitioner explain in the Petition or the Preliminary Reply how or why an ordinarily skilled artisan would have applied this teaching to audio data recorded by an audio device. Petitioner cites this visual recording data synchronization passage as a solution to a problem that Strub identifies in clocks not being adequately synchronized to enable use of time-stamps associated with recordings to be used to synchronize the recordings. See Prelim. Reply 1‒2 (citing Ex. 1003, col. 38, ll. 29‒37, col. 79, l. 63‒col. 80, l. 2). However, immediately following the cited portion that identifies this problem, Strub further explains that “[i]f recording units according to the invention each include a GPS receiver, such mis-synchronization will only exist to an appreciable degree if one or more recording units are shielded from a GPS transmitter system for an extended period of time, e.g., several hours.” Ex. 1003, col. 80, ll. 2–27. Thus, Strub suggests that the solution to this problem is for the recording units to receive their timecodes not from a master recording unit, as argued by Petitioner, but from a GPS satellite.4 Petitioner does not address this teaching.” slip op. at 22

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that the Petition does not rely on Woo as teaching or suggesting limitation 1[A]; Petitioner relies solely on the teachings of Strub. See Pet. 33–35 (arguing that “Strub teaches this element”). Petitioner references Strub’s teachings as being “consistent with and reinforced by the Woo reference” in the Preliminary Reply (Prelim. Reply 2), but this is not sufficient to rely on Woo, alone or in combination with Strub, as teaching this limitation. We also agree that the Lectrosonics IPRs’ findings regarding Woo teaching the “master timecode generator” limitation recited in those challenged claims are inapplicable here, where claim 1 recites additional limitations not present in those challenged claims. Compare Ex. 1001, col. 43, ll. 26‒27 (claim 1 of the ’444 patent: “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data”) with Ex. 1028, col. 23, ll. 20‒21 (claim 1 of the ’814 patent: “at least one master timecode generator for generating a plurality of master timecodes”) and Ex. 1030, col. 23, ll. 38‒39 (claim 1 of the ’902 patent: “at least one master timecode generator for generating a plurality of master timecodes”). Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 12,051,444
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution denied
  PTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution

  The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.

  RulingsInstitution decision

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

    “Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13

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

    “For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,499,168
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Jul 18, 2023 · IPR2023-00320 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6–7, 16–17, or 27–28 were unpatentable; disclaimed claims were excluded.

  RulingsInstitution decision

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

    “Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77. For these reasons, we determine that Petitioner has not shown that claims 6, 16, and 27 lack written description support in Barsoum. Petitioner does not assert that claims 7, 17, and 28 lack written description support in Barsoum for any reason separate than provided by its assertions against parent claims 6, 16, and 27. Therefore, Petitioner has not shown a lack of written description in claims 7, 17, and 28.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “unequally spaced symbol constellations to a second group of unequally space[d] symbol constellations when the two groups are operated at the same SNR.” Pet. 15 (emphasis omitted). Petitioner argues that Barsoum “only describes determining a relative relationship between a geometrically shaped (i.e., unequally spaced) constellation and a constellation optimized for dmin.” Id. (citing Ex. 1027, 6:14–20, 2:56–63; Ex. 1003 ¶ 86). Petitioner points to a statement in Barsoum as “specifying that not all geometrically shaped constellations have a greater capacity than that of a constellation maximized for dmin.” Id. at 17 (citing Ex. 1027, 6:13–22). Petitioner asserts that Barsoum’s non-uniform constellations are capable of providing such greater parallel decoding capacity only after having been optimized for that purpose. Id. at 19 (citing Ex. 1027, 6:13–22, Ex. 1003 ¶ 92). Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “16–17, and 27–28 are obvious over the combination of Barsoum and ATSC327. Pet. 26. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21 upon which the challenged claims depend. Pet. 39–71, 96–98, 101–102. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See Prelim. Resp. As we have determined that Barsoum is not prior art to claims 6, 7, 16, 17, 27, and 28, the Petition does not establish a reasonable likelihood that those claims are obvious over the combination of Barsoum and ATSC327.” slip op. at 9

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,019,509
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Jul 11, 2023 · IPR2023-00228 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Eroz and DVB-T, with or without DeGaudenzi, rendered the challenged claims obvious.

  RulingsInstitution decision

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

    “Petitioner’s argument is largely conclusory, and does not sufficiently explain why it would have been obvious to modify or optimize the combination of Eroz and DVB-T to arrive at the claimed invention. The Petition asserts that limiting each constellation to only one constellation-code rate pair would be “desirable so that inferior SNR or inefficient constellation and code rate pairs are not utilized in [the combined Eroz and DVB-T] system” without any cited factual evidence to support this explanation. Pet. 38. Further, the Petition does not discuss or describe how the optimization would work in view of the teachings of Eroz or DVB-T, other than to merely assert that optimization would result in the claimed invention. This is insufficient. Petitioner does cite to its declarant for support, but the declarant makes identical statements as the Petition without further explanation. Compare Pet. 38–39, with Ex. 1003 ¶¶ 122–123. Because the declarant testimony, like the Petition, is conclusory in nature with respect to the alleged obviousness of the limitation (i.e., “where each of the plurality of different non-uniform multidimensional symbol constellations is only included in one of the plurality of predetermined LDPC code rate and multidimensional symbol constellation pairs”), it is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (August 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning). We further note that page 38 of the Petition provides no citations, other than to their declarant, in support of their assertions as to why it would have been obvious to optimize the combination of Eroz and DVB-T to achieve the claimed limitation. In any event, even if we were to credit Dr. Hochwald that such a conclusion is evident to a person of ordinary skill in the art, the Petition lacks sufficient reasoning that would inform how the desire to optimize the constellation-rate pairs would have resulted in the claimed limitation. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding obviousness determination to be improper where the record lacked a “clear, evidence-supported account” of “how the combination” would work).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 31. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner asserts that no terms require express construction. Pet. 9. Likewise, Patent Owner does not argue that any terms require express construction. See generally, Prelim. Resp. We determine that no terms need to be construed. See 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 10

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

    “Petitioner’s argument is largely conclusory, and does not sufficiently explain why it would have been obvious to modify or optimize the combination of Eroz and DVB-T to arrive at the claimed invention. The Petition asserts that limiting each constellation to only one constellation-code rate pair would be “desirable so that inferior SNR or inefficient constellation and code rate pairs are not utilized in [the combined Eroz and DVB-T] system” without any cited factual evidence to support this explanation. Pet. 38. Further, the Petition does not discuss or describe how the optimization would work in view of the teachings of Eroz or DVB-T, other than to merely assert that optimization would result in the claimed invention. This is insufficient. Petitioner does cite to its declarant for support, but the declarant makes identical statements as the Petition without further explanation. Compare Pet. 38–39, with Ex. 1003 ¶¶ 122–123. Because the declarant testimony, like the Petition, is conclusory in nature with respect to the alleged obviousness of the limitation (i.e., “where each of the plurality of different non-uniform multidimensional symbol constellations is only included in one of the plurality of predetermined LDPC code rate and multidimensional symbol constellation pairs”), it is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (August 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning). We further note that page 38 of the Petition provides no citations, other than to their declarant, in support of their assertions as to why it would have been obvious to optimize the combination of Eroz and DVB-T to achieve the claimed limitation. In any event, even if we were to credit Dr. Hochwald that such a conclusion is evident to a person of ordinary skill in the art, the Petition lacks sufficient reasoning that would inform how the desire to optimize the constellation-rate pairs would have resulted in the claimed limitation. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding obviousness determination to be improper where the record lacked a “clear, evidence-supported account” of “how the combination” would work).” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,693,700
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Jul 5, 2023 · IPR2023-00229 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted combinations.

  RulingsInstitution decision

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

    “instituted only if “the information presented in the petition . . . and any [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 given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any asserted claim of the ’509 patent.1 Accordingly, we do not institute an inter partes review as to any asserted claim of the ’509 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’509 patent and the asserted prior art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “At this stage, no need exists to construe any claim terms expressly to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “In view of the totality of the evidence of record, we determine that Petitioner has not shown that Bauch’s constellation could be effectively used with Eroz’s LDPC codes. Because Petitioner’s rationale for combining Bauch and Eroz is partly based upon Petitioner’s allegation that Bauch’s constellation would be advantageously used with Eroz’s LDPC codes, this determination to the contrary undermines the persuasiveness of Petitioner’s obviousness arguments. In particular, the record does not support Petitioner’s arguments that the combination would provide an advantage through improving LDPC performance or efficiency, or that such a known methods to yield predictable results.” Pet. 24–27.” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,019,509
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Apr 20, 2023 · IPR2022-01549 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that De Gaudenzi1 teaches the claimed assignment of constellation locations and labels to maximize parallel decode capacity.

  RulingsInstitution decision

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

    “We find the testimony of Drs. Fàbregas and Caire convincing as to what De Gaudenzi1 teaches. Further, we note that Petitioner’s argument and supporting declaration testimony are conclusory and do not sufficiently explain how De Gaudenzi1 teaches “an unequally spaced symbol constellation that is characterizable by assignment of locations and labels of constellation points to maximize parallel decode capacity.”” slip op. at 16

  • BurdenDecided for patent owner

    “what De Gaudenzi1 teaches. Further, we note that Petitioner’s argument and supporting declaration testimony are conclusory and do not sufficiently explain how De Gaudenzi1 teaches “an unequally spaced symbol constellation that is characterizable by assignment of locations and labels of constellation points to maximize parallel decode capacity.”” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We find the testimony of Drs. Fàbregas and Caire convincing as to what De Gaudenzi1 teaches. Further, we note that Petitioner’s argument and supporting declaration testimony are conclusory and do not sufficiently explain how De Gaudenzi1 teaches “an unequally spaced symbol constellation that is characterizable by assignment of locations and labels of constellation points to maximize parallel decode capacity.”” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in an academic area emphasizing electrical engineering or a similar discipline, and at least two years of experience in the field working with, teaching, or researching communication systems including the use of con-stellations in transmitting signals between devices. Superior ed-ucation could compensate for a deficiency in work experience, and vice-versa.” slip op. at 11

  Claim constructioncites KSR · Graham
  Patents in suitUS 10,567,980
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Apr 20, 2023 · IPR2022-01482 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that Sommer taught the optimized-for-capacity limitation in independent claims 1 and 17, which also appears in the challenged dependent claims.

  RulingsInstitution decision

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

    “Petitioner’s argument is conclusory and does not sufficiently explain how Sommer teaches a “constellation optimized for capacity.” Patent Owner argues that because Petitioner does not construe “optimized,” the Petition provides no “metric by which the Board could determine whether Sommer discloses optimized.” Prelim. Resp. 37; see also id. at 37–38. We agree that a construction of “optimized” could have provided a metric for us to better evaluate Petitioner’s argument. See 37 C.F.R. § 42.104 (the Petition should “provide a claim construction for the challenged claims.”). Without a claim construction and with insufficient explanation for how Sommer teaches that its constellation is “optimized for capacity,” the Petition fails to establish a reasonable likelihood of showing that Sommer teaches the last limitation of independent claims 1 and 17. For example, although the Petition argues that Sommer’s constellations provide a capacity gain versus other methods, it is unclear whether Petitioner is arguing that this improvement means the constellation is optimized. If this were Petitioner’s position, the Petition does not explain why one of skill in the art would have understood an improvement that results from using Sommer’s constellations to be the same as optimizing the constellation as required by the claim.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 37. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’761 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Though Patent Owner’s evidence establishes that the term “optimized” is common and understood in the art, we determine that it is not necessary for us to construe “optimized” for our decision. We further determine that no other terms need to be construed. See 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 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Further, the cited testimony of Petitioner’s declarant for this limitation is identical to the Petition. Compare Pet. 54–55, with Ex. 1003 ¶ 129. Because the declarant testimony, like the Petition, is conclusory in nature with respect to how Sommer teaches optimization, it is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (August 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning).” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,842,761
• Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Mar 29, 2023 · IPR2022-01507 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that de Heer, alone or with the other references, disclosed or rendered obvious the required association of identifiers for claims 1, 16, and …

  RulingsInstitution decision

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

    “provides that an inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’198 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We are persuaded Petitioner has not shown that de Heer discloses the recited association. Patent Owner is correct that the claim language requires the association of identifiers: the first online user interface device identifier and the first set top box identifier are associated. Ex. 1001, 25:32−33. Petitioner relies on the theory that de Heer’s IP address assignment anticipates the claim. But de Heer’s IP address, as pointed by Patent Owner, corresponds to either a single IP address or a range assigned to a particular household. See Prelim. Resp. 11−12. Having a common IP address or an IP address in an assigned range, however, does not itself disclose the recited association of identifiers. De Heer does not describe the “common IP address” as a way to associate two identifiers. Indeed, as Patent Owner points out, de Heer determines that the client corresponds to a particular household without describing any associations being used by the database to locate the interaction data or the advertisement. See id. And Petitioner’s assertion that the advertising service associates the two devices merely because of a “common IP address” is insufficient by itself for de Heer to anticipate the claim. See Pet. 27 (stating “that determining that STB and computer have a common IP address as “seen” by online advertising service 110, the online advertising service 110 associates the two devices”). At best, de Heer describes that a client’s IP address may be used to” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “has not shown de Heer anticipates claims 1 and 18. We are also not persuaded that Petitioner has shown that de Heer and Cameron render obvious claims 1 and 18. Pet. 60−63. Petitioner relies on Cameron for its disclosures of collecting data through a set-top box anonymously. Id. (“Cameron describes anonymously collecting viewership data from television programs delivered to the viewer through a set-top box.”). That is, Cameron is not relied upon for teaching the “association of identifiers” and Petitioner did not show that Cameron teaches association of identifiers as required by the claim, separately or as an alternative to de Heer. Thus, the de Heer/Cameron obviousness grounds fails to meet the reasonable likelihood threshold for the same reasons as stated for the anticipation ground discussed above. The remaining challenged claims depend directly from independent claims 1 or 18, and Petitioner contends these claims are also anticipated by de Heer or rendered obvious by de Heer/Cameron in combination with other asserted references. Pet. 34–42, 63−65. None of the additional references— Martinez and Roetter—cure the deficiencies noted above regarding the “wherein limitation.” Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing on its assertions concerning the challenged dependent claims (claims 16, 19−25).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(POSA) “would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with Internet or similar network-related processes and/or systems including, for example, online content delivery, such as targeted advertisements, or a related field,” but that “[m]ore education can supplement practical experience and vice versa.” Pet. 4–5 (citing Schonfeld Decl. ¶¶ 20–21). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. At this stage of the proceeding, and given the lack of dispute concerning the proposed level of ordinary skill in the art, we adopt Petitioner’s assessment, which at this juncture appears reasonable given the specification of the ’198 patent and asserted prior art of record.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,321,198
• Apple Inc. / HP Inc. v. XR Communications LLCInstitution denied
  PTAB · Jan 5, 2023 · IPR2022-01155 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 15, and 16 were unpatentable on either asserted obviousness ground.

  RulingsInstitution decision

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

    “(6) Analysis and conclusion as to the processor configuration limitations For the reasons below, we determine that Petitioner has not demonstrated sufficiently that the combination of Saunders and Hottinen teaches or suggests a processor configured as recited in claim 1. Specifically, we determine that Petitioner fails to explain sufficiently how the combined system includes a processor that is configured to receive, from a remote station, a first signal transmission via the first antenna element and a second signal transmission via the second antenna element simultaneously, where the second signal information is different than the first signal information—requirements recited in limitations [1c-1] and [1c-2].” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the time of the ’235 Patent . . . would have had a Bachelor of Science degree in an academic discipline emphasizing electrical engineering or a related field, in combination with training or at least two years of related work experience in wireless communication systems, or the equivalent. Alternatively, the person could have also had a Masters or Doctorate degree in electrical engineering with a year of related work experience in wireless communication systems. Pet. 10 (citing Ex. 1026 ¶¶ 24–25). Patent Owner does not address the level of ordinary skill in the art in the Preliminary Response. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record, and the skill reflected in the Specification of the ’235 patent, based on our review of the limited record.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that “[n]o formal claim constructions are necessary for this [P]etition.” Pet. 3. Patent Owner states that “[t]he Board need not construe any terms for purposes of this institution decision.” Prelim. Resp. 7. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the record before us. See 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Akl testifies “from Saunders’[s] equation 1 and other equations (up to equation 5), that the signals in the Saunders-Hottinen system are received simultaneously.” Ex. 1026 ¶ 87. Dr. Akl fails to explain adequately how the vector “y” of Zarrinkoub relates to Saunders’s received signal vector, “x.” That is, Dr. Akl fails to explain adequately that Saunders’s “x” vector would be calculated based on values from different information streams received at the different antenna elements. Because Dr. Akl fails to link the teachings of MIMO from Zarrinkoub, or otherwise explain how Saunders’s received signal vector, “x,” is based on signals containing different information, we afford his testimony on this issue little weight.” slip op. at 30

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,715,235

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.