- Ubiquiti Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Mar 7, 2025 · IPR2024-01290 · APJ Russell E Cass · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed patent owner constructionDecided for patent owner
“interview to incorporate prosecution dependent claim 2 into prosecution claim 1 and cancel prosecution dependent claim 3. See § I.F, supra. We determine that this agreement and the corresponding amendment constitutes a clear disavowal of subject matter that supports Patent Owner’s construction. Prosecution claim 2 required that the second communication frame follow the first communication frame after a SIFS (corresponding to Figure 5 of the ’122 patent), while prosecution claim 3 required that there be a SIFS and an intervening response between the first and second communication frames (corresponding to the embodiments of Figures 3 and 4 of the ’122 patent). Before the amendment, original claim 1 included both of these embodiments, but the incorporation of prosecution claim 2 into prosecution claim 1 and the cancellation of prosecution claim 3 limited issued claim 1 to only the embodiment of prosecution claim 2. Because Larsson disclosed an intervening response to the first communication frame before the second communication frame, the clear import of the amendment was to limit claim 1 to the embodiment where the second communication frame follows immediately after the SIFS in order to distinguish claim 1 from Larsson. Indeed, in the Reasons for Allowance, the examiner explained that claim 1 distinguishes over the prior art (including Larsson) because “[t]he prior art of record fails to teach or fairly suggest ‘receiv[ing] the second communication frame after a short inter frame space (SIFS) that follows the first communication frame,’” as added from prosecution claim 2. Ex. 1002, 47. If, as Petitioner argues, prosecution claim 2 was broad enough to cover the embodiment of prosecution claim 3, then the amendment would have served no apparent purpose. Thus, we agree with Patent Owner that “[t]here is no other plausible explanation for why, when faced with Larsson’s disclosure of an intervening response, the Examiner initiated an interview to incorporate the SIFS limitation of dependent claim 2 into claim 1, and cancel dependent claim 3, which, like Larsson, included an intervening response.” See Prelim. Sur-reply 1–2.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“of the alleged invention would have had “(1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications standards and/or product development.” Pet. 26 (citing Ex. 1003 ¶¶ 25–26). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not advance a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp.; Prelim. Sur-reply. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’122 patent and the asserted prior art of record.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner fails to show that Gu teaches that “the second communication frame follows after a short inter frame space (SIFS) after the first communication frame with the transmit announcement indication.” Ex. 1001, 7:64–67. As discussed above, we construe this limitation to require that “the second communication frame follows substantially immediately after the first communication frame (without any intervening response to the first communication frame),” as Patent Owner proposes. See § II.A, supra. Petitioner has not shown that Gu meets this construction because Gu includes an intervening response between the first and second communication frames. Consequently, Petitioner has failed to demonstrate a reasonable likelihood that claim 1 is unpatentable over the combination of Gu and Trainin.” slip op. at 31
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4 (2024). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review on any grounds set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,594,122 - PTAB · Mar 4, 2025 · IPR2024-01180 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were unpatentable, chiefly because Rao did not teach blocking network access.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 4 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 at ¶¶ 24–26). Patent Owner “does not challenge the Petition’s proposed definition.” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’076 patent.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that the term “disallow[]” should be given the same construction the parties agreed upon during the district court proceeding. Prelim. Resp. 9. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Petitioner does not sufficiently explain where Rao teaches “allow[ing] or disallow[ing]” as recited in claim 1. See Pet. 13–18, 25–30. To the extent Petitioner and Dr. Bims cite to Rao, they reference paragraphs 191 through 193, which discuss how Rao’s filter 322 is used to implement prioritization. See Pet. 15; Ex. 1003 ¶ 65. More specifically, those paragraphs recite using prioritization to place the network packets in different queues based on their priority. See Ex. 1005 ¶¶ 191–193. We see nothing in Rao that teaches or suggest that the network packets would be disallowed, as opposed to simply delayed, based on priority. Id. And, as Patent Owner argues, this finding is consistent with factual findings made by a different panel considering the teachings of Rao in an inter partes review of a related patent. See Prelim. Resp. 16–18 (citing Samsung Elecs. Co v. Headwater Research LLC, IPR2023-01361, Paper 8 (PTAB Mar. 29, 2024) (Decision Denying Institution)). Even if one reads the Petition as arguing that a person having ordinary skill would have modified Rao to include Araujo’s blocking—which we do not—we would not be sufficiently persuaded by that argument. Although Petitioner explains why a person having ordinary skill in the art would want to consider power usage along with whether the application is in the foreground or background, Petitioner does not explain why a person having ordinary skill in the art would have changed prioritization to blocking. See Pet. 13–18. Indeed, such a modification appears to be one that would render Rao “inoperable for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,076 - Lenovo (United States) Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Feb 18, 2025 · IPR2024-01226 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Lenovo had not shown a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“identifies and refers to a valid region of the integrated circuit memory device as having a three-dimensional boundary delimited by phase ranges in command/address signals, data signals, and sampling signals. Nowhere does the ’835 patent specification indicate a valid region of the integrated circuit device as a whole can be represented by values for less than three parameters x, y, and z, all together, e.g., the command signals, the data signals, and the sampling signals. Also, the ’835 patent describes that the purpose of determining the boundaries of a valid region is to configure an optimal operating point for the integrated circuit device. Ex. 1001, 5:48–51. We have also considered other language in the claims. Each of independent claims 1 and 7 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operation range.” Ex. 1001, 6:56–7:4, 7:18–34. Each of independent claims 12, 20, and 23 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operating range.” Ex. 1001, 7:46–60, 8:28–44, 8:62–10:4. Based on the foregoing, the specification informs us that “valid operation range” is a three-dimensional range. We recognize that the specification does not expressly exclude a two-dimensional range or multiple two-dimensional ranges from being a “valid operation range” of the integrated circuit device. However, that is why we construe the claims to determine what, if anything, may be required despite a lack of express recitation in the claims.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Baker, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Pet. 4 (citing Ex. 1002 ¶¶ 31–35). Patent Owner’s expert, Mr. Lee, testifies: “I agree with Petitioner that [Petitioner’s statement of the level of ordinary skill] would be the minimum qualifications for a POSITA.” Ex. 2001 ¶ 35. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, i.e., that a POSITA “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Ex. 1002 ¶ 34. The stated level is supported by the testimony of Dr. Baker and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,646,835 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00945 · APJ Stephen E Belisle · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–24 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Prelim. Resp. 22; Ex. 2001 ¶ 67. Patent Owner argues Petitioner relies on Freund to “cure this deficiency,” but the “Petition fails to explain why [the skilled artisan] seeking to implement a Rao-based system would look to Freund’s teachings of foreground/background classifications designed to limit an employee’s ‘counterproductive Web browsing.’” Prelim. Resp. 22. According to Patent Owner and its expert, Mr. de la Iglesia, the skilled artisan “would not have been motivated to do so, because directly contrary to Rao which suggests prioritizing foreground activity over background activity, the relevant teachings of Freund restrict foreground activity relative to background activity.” Id. (citing Ex. 2001 ¶¶ 67–79); see Ex. 2001 ¶¶ 69 (“Rao favors foreground activity, and Freund favors background activity”), 70 (“In contrast [to Rao], Freund teaches the opposite—that foreground activity should be disfavored relative to background activity.”); Prelim. Resp. 23–25. Patent Owner argues the “Petition does not explain why [the skilled artisan] would have been motivated to combine these two references’ treatment of foreground/background classifications, given their opposing treatment of foreground and background activity.” Id. at 25; see id. at 25–28 (Patent Owner explaining why “none of the Petition’s motivations would have justified combining Rao’s and Freund’s contradictory teachings regarding treatment of foreground activity.” (citing Ex. 2001 ¶¶ 74–79)). In short, according to Patent Owner’s expert’s persuasive testimony, “if [the skilled artisan] were looking for ways to supplement Rao’s treatment of foreground activity, they would not have looked to teachings that explicitly disfavor foreground activities, contrary to Rao’s teachings.” Ex. 2001 ¶ 79 (cited at Prelim. Resp. 28).” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 5–6 (“For purposes of this Preliminary Response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, 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 level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’613 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 61), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 3 (“No terms require construction to resolve this Petition.”); Prelim. Resp. 6 (“Patent Owner agrees that no formal claim construction is necessary.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,215,613 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 15, 2024 · IPR2024-00746 · APJ Brian J Mcnamara · IPR · Institution
Institution was denied for claims 1–9 and 12 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 15 (citing Ex. 1002, Schmandt Decl. ¶¶ 11–15). Patent Owner does not explicitly dispute Petitioner’s characterization of a person of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the level of ordinary skill appears consistent with the technology of the ’209 patent and the references, we apply Petitioner’s characterization of an ordinarily skilled artisan for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party has proposed a special definition or explicit construction of any claim term for purpose of this Decision. See Pet. 17 (“[e]xpress claim construction is unnecessary”); Prelim. Resp. 13 (“the Board need not engage in any pre-institution claim construction”). For purposes of this Decision, we understand Petitioner to propose that the claims be given their ordinary and customary meaning as understood by a person of ordinary skill under Phillips. 37 C.F.R. 42.104(b)(3).” slip op. at 9
- BurdenDecided for patent owner
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not demonstrated that the combined teachings of Coffman, Kanevsky, Kneser, and that Petitioner has not shown a reasonable likelihood it would prevail in its challenge to claim 1 based on the combined teachings of these references.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,398,209 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 15, 2024 · IPR2024-00747 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Google 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
“c) Summary Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that the combination of Coffman, Kanevsky, and Ronning teaches or suggests “the parser selects at least one of the plurality of domain agents based on the determined meaning,” as Petitioner would prevail in showing that the subject matter of claim 1 would have been obvious over Coffman, Kanevsky, and Ronning.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We have reviewed Coffman’s disclosure and Mr. Schmandt’s testimony cited by Petitioner in support of its arguments in light of the Preliminary Response arguments, and agree with Patent Owner that Coffman does not disclose the NLU (i.e. parser) selects a conversationally- on the determined context. Petitioner’s citations to page 6, line 32 through page 7, line 3, page 37, lines 2 through 4 and page 41, lines 1 through 7 of Coffman fail to provide adequate support for Petitioner’s arguments. We agree with Patent Owner that page 6, line 32 through page 7, line 3 of Coffman discloses mouse clicks and stylus pointing by a user. See Prelim. Resp. 39; Ex. 1003, 6:32–7:3. We further agree with Patent Owner that page 37, lines 2 through 4 is directed to queries, not selecting applications. See Prelim. Resp. 32–33; Ex. 1003, 37:2–4. Finally, we agree with Patent Owner that page 42, lines 1 through 7 associates a process with tasks and threads performed at the conversational virtual machine. See Prelim. Resp. 30; Ex. 1003, 42:1–7, 42:16–17, Fig. 4. Mr. Schmandt’s cited testimony is nearly identical to the arguments presented in the Petition. See Ex. 1002 ¶¶ 71, 85. Mr. Schmandt’s testimony is conclusory and fails to provide a sufficient underlying factual basis for the testimony because it relies on the same citations to Coffman’s deficient disclosure. See Ex. 1002 ¶¶ 71, 85. Petitioner does not rely on the teachings of Kanevsky and Ronning in combination with Coffman for teaching “the parser selects at least one of the plurality of domain agents based on the determined meaning.” See Pet. 24– 25, 25–26, 31–32. c) Summary Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that the combination of Coffman, Kanevsky, and Ronning teaches or suggests “the parser selects at least one of the plurality of domain agents based on the determined meaning,” as Petitioner would prevail in showing that the subject matter of claim 1 would have been obvious over Coffman, Kanevsky, and Ronning.” slip op. at 19
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have reviewed Coffman’s disclosure and Mr. Schmandt’s testimony cited by Petitioner in support of its arguments in light of the Preliminary Response arguments, and agree with Patent Owner that Coffman does not disclose the NLU (i.e. parser) selects a conversationally- on the determined context. Petitioner’s citations to page 6, line 32 through page 7, line 3, page 37, lines 2 through 4 and page 41, lines 1 through 7 of Coffman fail to provide adequate support for Petitioner’s arguments. We agree with Patent Owner that page 6, line 32 through page 7, line 3 of Coffman discloses mouse clicks and stylus pointing by a user. See Prelim. Resp. 39; Ex. 1003, 6:32–7:3. We further agree with Patent Owner that page 37, lines 2 through 4 is directed to queries, not selecting applications. See Prelim. Resp. 32–33; Ex. 1003, 37:2–4. Finally, we agree with Patent Owner that page 42, lines 1 through 7 associates a process with tasks and threads performed at the conversational virtual machine. See Prelim. Resp. 30; Ex. 1003, 42:1–7, 42:16–17, Fig. 4. Mr. Schmandt’s cited testimony is nearly identical to the arguments presented in the Petition. See Ex. 1002 ¶¶ 71, 85. Mr. Schmandt’s testimony is conclusory and fails to provide a sufficient underlying factual basis for the testimony because it relies on the same citations to Coffman’s deficient disclosure. See Ex. 1002 ¶¶ 71, 85.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’738 Patent Specification and the asserted prior art.” slip op. at 10
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,502,738 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 11, 2024 · IPR2024-00751 · APJ George R Hoskins · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood of prevailing on any challenged claim, failing to show Coffman identifies a domain agent associated with a matching context-stack entry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8
- BurdenDenied
“institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. POTENTIAL DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d) Patent Owner urges us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution of review, on the basis that the Examiner considered and commented on Coffman and Kennewick during prosecution of the ’607 patent, and Petitioner’s reliance on Ross (in Ground One) and Lee (in Ground Two) does not cure a deficiency of Coffman relating to merged transcriptions that was recognized by the Examiner. See Prelim. Resp. 3–4, 14, 44, 47–50. Petitioner provides opposing arguments. See Pet. 10–12. In light of our determination above to deny institution on the merits per 35 U.S.C. § 314(a), we do not reach the § 325(d) issues raised by Patent Owner.” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,447,607 - PTAB · Sep 3, 2024 · IPR2023-00797 · APJ Stephen E Belisle · IPR · Remand
The Board denied institution because Honda did not show a reasonable likelihood that claims 23, 24, 26, or 27 were obvious over either asserted combination.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 23, 24, 26, and 27 of the ’302 patent. Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’302 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We find Patent Owner’s arguments persuasive, and the above testimony of its technical expert, Mr. Alberth, even more so. Based on the foregoing and the record before us, we find Petitioner fails to sufficiently show that the ’586 Provisional lacks written description support for the feature of a transmitter configured to form and transmit, in response to a received request, “the probing signal with a code sequence modulated in the frequency domain,” as recited in independent claim 23. Although not its burden, we find Patent Owner sufficiently evidences that the disclosure of the ’586 Provisional would have reasonably conveyed to skilled artisans that the inventor possessed the features of the subject limitation. 5. Conclusion For the reasons expressed above, and based on the record before us, we determine Petitioner has not sufficiently shown that Koo is prior art to the Challenged Claims. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that any of the Challenged Claims is unpatentable as obvious over the combination of 802.16a-2003, 802.16-2001, and Koo.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“But in doing so, Petitioner ignores the context in which the skilled artisan would have read Kitroser: where IEEE, the governing body issuing the Call for Contributions, itself explicitly questioned “if [implementing 802.16a in a mobile systems environment] is technically feasible and, if so, at what level” (Ex. 2007, 1 (emphasis added)), and where, as noted above, Kitroser provides no explanation, support, or other commentary for its “no changes” statements, and admits such statements are “subject to change in form and content after further study” and subject to amendment and withdrawal entirely (Ex. 1007, 1–4 (emphasis added)). Based on the foregoing, although Petitioner may have identified a “reason” that the skilled artisan allegedly would have combined 802.16a with Kitroser, we are not persuaded that it is a rational reason, i.e., a reason sufficiently shown to have a rational underpinning at the time of the invention of the Challenged Claims. See KSR, 550 U.S. at 418 (To support the legal conclusion of obviousness, “there must be some articulated reasoning with some rational underpinning” for combining elements in the manner claimed. (quoting In re Kahn, 441 F.3d at 988)).” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, 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 level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’302 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Buehrer (Ex. 1003 ¶ 23), except that we omit the two instances of “at least” to remove the unbounded nature of the definition.” slip op. at 13
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,771,302 - Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19
- Parallel petitionsNot reached
“Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,413
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.