• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,010,330
• HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.

  RulingsInstitution decision

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

    “B. Principles of Law In an inter partes review, “the petitioner has the burden from the 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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7

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

    “Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14

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

    “Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 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.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15

  § 103 obviousnesscites KSR
  Patents in suitUS 7,206,587
• Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.

  RulingsInstitution decision

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

    “For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,206,587
• Unified Patents Inc. v. Red Rock Analytics, LLCRehearing denied
  PTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2

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

    “calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4

  • BurdenNot shown unpatentable

    “signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3

  Claim construction
  Patents in suitUS 7,346,313
• Ubisoft, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution denied
  PTAB · Jan 22, 2018 · IPR2017-01828 · APJ Sally C Medley · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 8, 12, 13, 15, and 19 were anticipated by Inside Macintosh.

  RulingsInstitution decision

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

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

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

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

  • BurdenNot shown unpatentable

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

  § 102 anticipationcites Phillips
  Patents in suitUS 6,489,974
• Ubisoft Entertainment S.A. / Square Enix v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution denied
  PTAB · Jan 18, 2018 · IPR2017-01827 · APJ Jessica C Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 12, and 17 were anticipated by TME Cookbook.

  RulingsInstitution decision

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

    “2. Analysis of Petitioner’s Challenge To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 6

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

    “2. Analysis of Petitioner’s Challenge To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “E. Asserted Ground Petitioner relies on The TME Deployment Cookbook (“TME Cookbook”) dated April 1997 as anticipating claims 1, 12, and 17 of the ʼ293 patent under 35 U.S.C. § 102(b). Petitioner further relies on testimony from Mark C. Lang, an attorney with Erise IP, P.A., as establishing that TME Cookbook qualifies as a printed publication. Pet. 10–11 (citing Ex. 1004). Patent Owner does not challenge the printed publication status of TME Cookbook at this stage of the proceeding. See Prelim. Resp. For purposes of this decision, we assume without deciding that Petitioner has sufficiently shown TME Cookbook qualifies as a printed publication under 35 U.S.C. § 102(b).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 7,069,293
• Broadsign International, LLC v. T-Rex Property ABInstitution denied
  PTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution

  The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.

  RulingsInstitution decision

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

    “We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9

  • Adverse judgmentAdverse judgmentOther

    “that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7

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

    “Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6

  Claim construction
  Patents in suitUS 6,430,603
• Ultratec, Inc. v. Captioncall, L.L.C.Institution denied
  PTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution

  The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.

  RulingsInstitution decision

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

    “review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12

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

    “excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR
  Patents in suitUS 9,197,745
• Nautilus Hyosung, Inc. v. Diebold, Inc.Rehearing denied
  PTAB · Jan 31, 2017 · IPR2016-00580 · APJ Georgianna W Braden · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1, 5-8, 10, 16, 26, and 27 because the obviousness arguments were insufficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Applying these legal standards, we address the arguments presented by Petitioner.” slip op. at 3

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

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • BurdenDecided for patent owner

    “The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. The Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. See 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”).” slip op. at 10

  § 103 obviousnesscites KSR
  Patents in suitUS 6,082,616
• Securus Technologies, Inc. v. Global Tel*link CorporationRehearing granted
  PTAB · Sep 12, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Rehearing

  The Board granted rehearing only insofar as it addressed the request, but denied rehearing overall and maintained denial of institution because the petition did not show a reasonable likelihood of unpatentability.

  RulingsRehearing decision

  • RehearingRehearing, deniedGranted in part

    “public mode,” including specific citations, namely “Ex. 1005 at 16:24-31; 18:2- 8.” See Reh’g Req. 7. Those citations fall short, however, because they were not provided in the Petition. The closest citation provided by Petitioner is “Ex. 1005 at 16:54-17:3,” at page 41 of the Petition. The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. We must make our determination regarding institution based on what the Petition actually presented and not what it could have reasonably contained had it been reformulated. In re 5 Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016) (holding that the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR”). slip op. at 5

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

    “The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the 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 never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 4

  • BurdenDecided for patent owner

    “As such, it is not clear how Petitioner could have relied solely on the public mode of Bulriss when neither the public nor the privacy modes are acknowledged in the Petition. If an understanding of the public mode of Bulriss was important in the context of Petitioner’s case against the claims of the ’816 Patent, no such import or discussion of the public mode was provided in the Petition. The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the 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 never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 4

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

    “communications” limitation and its proffered motivation to combine Bulriss and Hesse. Reh’g Req. 11–14. We have previously discussed and decided these issues in the Denial of Institution Decision, and we are not persuaded of error in their consideration. Dec. 8–9, 12. As we discussed, the motivation to combine cannot come from the subject patent itself, such that even if “[t]he motivation to combine is therefore explicit in the references” (Reh’g Req. 14), it does not cure the deficiencies of the combination of Bulriss and Hesse provided in the Petition, as discussed in the rest of the Decision. Likewise, the new citations to Bulriss (Reh’g Req. 12), not found in the Petition, cannot be used to show that we misapprehended the arguments supplied in the Petition or that we used unreasonable judgment in determining that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. Dec. 12. For the foregoing reasons, Petitioner has not shown that the Board’s findings are not supported by substantial evidence, nor that the Board abused its discretion 6 in determining that Petitioner failed to demonstrate that at least one of the challenged claims of the ’816 Patent is unpatentable.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 7,256,816

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.