• Caption Health, Inc v. University Of British ColumbiaInstitution denied
  PTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10

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

    “The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing 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 foundReasonable expectation not foundNot shown unpatentable

    “Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,129,591
• Clearcorrect Operating, LLC v. Align Technology Inc.Institution denied
  PTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution

  The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.

  RulingsInstitution decision

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

    “3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8

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

    “Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. 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.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9

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

    “Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,524,879
• Innolux Corporation v. Phenix Longhorn LLCInstitution denied
  PTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • BurdenDecided for patent owner

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,557,788
• Experian Information Solutions, Inc. v. Dynapass IP Holdings LLCInstitution denied
  PTAB · Mar 28, 2024 · IPR2023-01406 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would be unpatentable over Sormunen and Perlman.

  RulingsInstitution decision

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

    “Petitioner shows that Sormunen discloses receiving a request from the user for a password and that a person of skill in the art would understand Sormunen’s password to be a passcode as claimed. Pet. 32–33. Petitioner further shows that Sormunen discloses that its method can be applied to obtain a PIN for a bank or credit card. Id. at 19. Petitioner, however, does not adequately explain why one skilled in the art would understand Sormunen’s PIN to be a token. Id.” slip op. at 19

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

    “At this stage of this proceeding, we determine that no claim terms require express construction in order to determine whether or not to institute inter partes review because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning because combining Sormunen’s password and PIN (both of which are known to the user) would not result in greater security. Moreover, for the reasons discussed above, we do not agree with Petitioner that Sormunen’s PIN is a token. Sormunen’s PIN is nothing more than a numerical passcode provided to a user when a charge card is ordered or when a new PIN is required because a prior PIN has been compromised. Ex. 1004, 9:28, 9:34–10:2. Given that both Sormunen’s password and its PIN are passcodes known to the user, Petitioner’s reasoning that a person of skill in the art would know from Sormunen to combine its password and PIN lacks rational underpinning. Further, Petitioner’s reasoning that a person of skill in the art “would understand that a PIN would commonly be generated by known techniques to produce a randomized string” is not supported by Sormunen, because Sormunen does not disclose a PIN produced by a randomized string. Petitioner’s reliance on Perlman does not cure these deficiencies in Petitioner’s reasoning. Pet. 35–37. Although, we agree with Petitioner that Perlman discloses a token, the Petition does not rely on Perlman’s teachings of a token to replace Sormunen’s PIN.4 Id.” slip op. at 21

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,993,658
• Sonos, Inc v. Google LLCInstitution denied
  PTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.

  RulingsInstitution decision

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

    “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 Technology, Inc., 815 F.3d 1358, 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”)). slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15

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

    “positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,632,748
• Ericsson Inc. v. Koninklijke KPN N.V.Institution denied
  PTAB · Sep 12, 2023 · IPR2023-00583 · APJ Kevin F Turner · IPR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–7, 22–26, 28, 29, 31, and 32 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. §314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we deny institution of an inter partes review of the ’705 Patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art would have had “a[t] least a bachelor’s degree in electrical engineering or a related field, and two years of experience working with wireless networks, and related technologies.” Pet. 12–13 (citing Ex. 1002 ¶¶ 59–61). Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 27. We adopt Petitioner’s description for purposes of this Decision. B. Claim Construction” slip op. at 6

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

    “Petitioner asserts that “given the close correlation and substantial identity between the references and the ’705 Patent the Board need not construe any of the terms to resolve the underlying controversy, as any reasonable construction reads on the prior art.” Pet. 12. Patent Owner submits that the terms recited in the Challenged Claims can each be given its” slip op. at 6

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

    “equivalence of optimizing a parameter, such as in Madebrink and Feuerstein, with the claimed “a deviation from the setting requirement based on an operational requirement deduced from the use of the radio network.” Prelim. Resp. 29. Patent Owner’s declarant testifies that there is no equivalence between optimizing a parameter and checking a parameter on the basis of a rule having a deviation from a setting requirement. Ex. 2008 ¶ 120. We agree with Patent Owner. Petitioner does not present specific evidence indicating that Feuerstein’s teaching of optimizing a parameter for a given environment is the same as checking the parameter on the basis of a rule comprising a deviation from a setting requirement. See Pet. 17–26. In fact, the evidence of record indicates that optimizing a parameter does not necessarily require checking the parameter against a rule. Ex. 2008 ¶ 120 (“the ‘rule’ recited in [1a] may reject verification of a modified network parameter even if it has been optimized”). We further agree with Patent Owner that Madebrink and Feuerstein teach optimization based on live traffic, and not based on a “rule,” per se. Prelim. Resp. 30–31 (citing Ex. 2008 ¶ 122).” slip op. at 13

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,705
• Bank Of America, N.A. / Truist Bank et al. v. Dynapass IP Holdings LLCInstitution denied
  PTAB · Jul 18, 2023 · IPR2023-00367 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because neither asserted obviousness combination showed a reasonable likelihood of prevailing on claims 1–3 and 5–7.

  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 and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we conclude that the Petition fails to establish that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–3 and 5–7 of the ’658 Patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we deny institution of an inter partes review as to the challenged claims of the ’658 Patent.” slip op. at 2

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

    “We agree with Patent Owner that Petitioner’s first articulated reason in support of the proposed combination lacks rational underpinning because 9 Here and throughout the remainder of this Decision, citations to references that are not the basis for the challenge being discussed are omitted. Sormunen does not support the premise that cellular networks and SMS messaging are more secure than computer networks.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner that Petitioner does not provide adequate support for its assertion that challenge requests via mobile station are more secure than challenge requests that rely on a user account ID. Petitioner identifies no such teaching in Guthrie or Sormunen. Further, we agree with Patent Owner that Dr. Reiher’s testimony amounts to no more than a restatement of Petitioner’s argument in the Petition without the support of additional evidence. We, therefore, give this testimony little weight. Xerox, IPR2022-00624, Paper 9 at 15–16.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that A person of ordinary skill in the art (“POSITA”) would have at least a bachelor’s degree in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and at 1 US 6,161,185 to Guthrie et al., issued December 12, 2000 (“Guthrie”) (Ex. 1007). 2 WO 97/31306, published August 28, 1997 (“Sormunen”) (Ex. 1008). 3 In accordance with the English translation, the inventor is Katou, not Kato. 4 JP 2000-10927 to Katou, published January 14, 2000 (“Katou”) (Ex. 1005). For purposes of this Decision we rely on the English translation of Katou (Ex. 1006). least two years of prior experience with user authentication technologies for computer systems as of the earliest priority date of the ’658 Patent—March 6, 2000. Additional education could substitute for professional experience and vice versa. Pet. 3–4 (citing Ex. 1002 ¶ 23). “For the purposes of [the Preliminary] Response only, Patent Owner does not dispute the level of skill of a person of ordinary skill in the art (‘POSITA’) identified in the Petition.” Prelim. Resp. 10. Based on the record presented, including our review of the ’658 patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,993,658
• Ericsson Inc. v. Koninklijke KPN N.V.Institution denied
  PTAB · Jul 8, 2022 · IPR2022-00401 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Ericsson had not shown a reasonable likelihood that claims 16 and 17 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “We agree with Dr. Olivier’s analysis that the transfer in Aerts of SET1 information is insufficient for enabling establishing a communication session, as required by claim 16. Accordingly, we agree that Aerts would have taught or suggested the first and second transfer stage requirements of claim 16.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Skill in the Art Petitioner’s expert, Dr. Olivier, testifies: [A] person of ordinary skill in the art at the time of the alleged invention of the ’426 Patent (July 15th, 2013) would have had a degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience, including designing or implementing cellular systems. A POSITA would also have familiarity with the wireless standards and protocols relating to subscriber management. This definition is approximate, and more education may substitute for industry experience or vice versa. Olivier Decl. ¶ 40. Patent Owner does not offer an alternative. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Petitioner would construe “enabling establishing a communication session between the user equipment and the telecommunications system,” which appears in independent claim 16, to mean “fully attaching the user equipment to the telecommunications system.” Pet. 20. Petitioner also proposed this construction in the Texas case, which the court’s claim construction order adopted. Ex. 2004, 19; Ex. 2008, 82. Patent Owner states that “[f]or the purposes of this Preliminary Response, Patent Owner discusses this claim element consistent with the district court’s construction, without waiving any rights to appeal the district court’s construction.” Prelim. Resp. 18–19. For purposes of this Decision, we construe this claim limitation in accord with the court’s construction in the Texas case. As set forth by Petitioner and its expert, and as explained in the claim construction order in the Texas case, “enabling establishing a communication session” is described in the ’426 specification as when an “attach control node” receives sufficient subscriber data to achieve a “full attach state.” Pet. 21 (citing Ex. 1001, 1:59, 3:55–62, 4:15–22, 8:17–20, 8:33–36, 9:14–15, 9:30–10:8, 10:32–36, 10:40–44, 13:14–17; Ex. 1014, 139–140); Olivier Decl. ¶¶ 106– 107.” slip op. at 11

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

    “We agree with Patent Owner. Any combination of Aerts and Daly, even if motivated, would not have taught or suggested the partial subscription data transfer indication requirement of claim 16. In hindsight, it may be said that both Aerts and Daly disclose a two-stage transfer of information in the context of a telecommunications system. However, Aerts teaches the required two-stage transfer of subscription data from a subscriber database to a telecommunications node, whereas at most Daly teaches the two-stage transfer of information from a network component that is not a subscriber database to a mobile station that is not a telecommunications node by any reasonable interpretation of those claim terms. Moreover, the “registration accept” message of Daly is not an “indication indicative of storing” any data anywhere — rather, it is a message that contains data (the SSID) which is subsequently stored as a separate operation. Daly, Fig. 4A, steps 62 & 66. Therefore, the “registration accept” message of Daly does not suggest the required “partial subscription data transfer indication.” Petitioner’s articulation of why one of ordinary skill would have combined Aerts with Daly to arrive at the subject matter of claim 16 is unpersuasive given the mismatch in the approaches of Aerts compared to Daly.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,549,426
• Samsung Electronics America, Inc. v. Proxense, LLCInstitution denied
  PTAB · Feb 28, 2022 · IPR2021-01447 · APJ Kevin F Turner · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

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

    “We agree with Patent Owner. The plain meaning of “third-party trusted authority” suggests an entity or party separate from the principal parties to a transaction. See, e.g., THE AMERICAN HERITAGE COLLEGE DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the principals involved in a transaction.”) (Ex. 3002). This is consistent with the description in the Specification. For example, Figure 3, reproduced above, depicts trusted key authority 320 as an entity separate from biometric key 100, authentication module 310, and application 330. As the Specification states, “[t]rusted key authority 320 is a third-party authority that is present in some embodiments in order to provide enhanced security.” Ex. 1001, 6:37–39. Examples of trusted key authorities include “a government official, a notary, and/or an employee of a third party which operates the trusted key authority, or another form of witness.” Id. at 7:33–36. Petitioner’s citations to the applicant’s statement during prosecution of the related patent also are consistent with a third-party trusted authority being an entity separate from the principal parties to a transaction, as is the declaration of Dr. Nielson. See Ex. 2001, 6–8; Ex. 2003 ¶¶ 70–74. Thus, we interpret “third-party trusted authority” to mean a trusted authority that is an entity separate from the parties to a transaction.” slip op. at 13

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

    “Claim 1 also recites “responsive to receiving an access message from the third-party trusted authority-indicating that the third-party trusted authority successfully authenticated the ID code,” with claim 9 providing a similar recitation. Patent Owner argues that “[a]n ‘access message’ must be sent by the ‘third party trusted authority’” and the parties “agree that the ‘access message’ originates from the ‘third-party trusted authority’ and communicates information regarding authentication.” Prelim. Resp. 3–4 (citing Ex. 2001, 9). Given the express requirement in claims 1 and 9 that the access message be received “from” the third-party trusted authority, we conclude that no further interpretation of the “access message” limitations is necessary.9” slip op. at 14

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

    “We agree with Patent Owner. Petitioner has not explained sufficiently why Lapsley’s DPC is a third-party trusted authority, what entities the DPC is a third-party relative to, or what application the user is being permitted to access in the asserted combination. As Patent Owner points out, the DPC appears to be what is being accessed, as the payee and payor, with the PIA, access a list of financial accounts from the DPC. See id. at 8–9; Ex. 1007 ¶¶ 167–170. Here, the DPC is the resource to be accessed, but it is a party to the transaction, rather than a third party. This is similar to the situation Petitioner argues that the applicant distinguished during prosecution: “[d]uring prosecution, the applicant explained a ‘user []prov[ing] to the same institution that authenticates the fingerprint information that the user is who he purports to be’ does not satisfy the ‘third party’ limitation.” See Ex. 2001, 7 (quoting remarks made by the applicant during prosecution of the related patent (alterations by Petitioner)). Petitioner’s reasons to combine also are conclusory and unsupported by persuasive evidence. In particular, Dr. Wolfe merely repeats Petitioner’s arguments in his testimony, without further explaining them or identifying the basis for his opinions.10 See Ex. 1003 ¶ 48. We agree with Patent Owner that Petitioner has not shown that Lapsley teaches a “third-party trusted authority” or that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Scott and Lapsley.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,298,905
• Samsung Electronics America, Inc. v. Proxense, LLCInstitution denied
  PTAB · Feb 28, 2022 · IPR2021-01448 · APJ David C Mckone · IPR · Institution

  Denied IPR of claims 1–9 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’989 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in computer or electrical engineering (or an equivalent degree) with at least three years of experience in the field of encryption and security (or an equivalent)” and “that more education could compensate for less experience and vice versa.” Pet. 4. Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “artisan “would have been motivated to modify Scott’s system such that authentication is performed by an external third-party trusted authority possessing a list of device ID codes that unique identify legitimate PIDs, as taught in Lapsley, to improve efficiency and flexibility of the system by consolidating ID codes to a central location at a secure third-party agent.” Id. at 26 (citing Ex. 1003 ¶ 53). Dr. Wolfe repeats this argument in his testimony, but does not state the basis for his opinion, rendering it of little value. See 37 C.F.R. § 42.65(a). Citing to Lapsley, Petitioner argues that a skilled artisan “would have recognized the benefit in reducing the risk of fraud by improving security and authentication by using a trusted third-party agent to verify devices involved in a transaction.” Id. (citing Ex. 1007 ¶¶ 8, 9, 27, 29). Petitioner argues that a skilled artisan “would have further understood that it was common to have an ATM that is not owned by a bank use the bank as a third party for authorization and it was common for a store to use a bank or credit card exchange as a third party for authorization.” Id. at 26–27. Petitioner does not cite any evidence for this argument.” slip op. at 24

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

    “We agree with Patent Owner. The plain meaning of “third-party trusted authority” suggests an entity or party separate from the principal parties to a transaction. See e.g., THE AMERICAN HERITAGE COLLEGE DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the principals involved in a transaction.”) (Ex. 3002). 4 Neither Petitioner nor Patent Owner has included in our record the file history of the ’730 patent or the Cryptographic Libraries for Developers book. This is consistent with the description in the Specification. For example, Figure 3, reproduced above, depicts trusted key authority 320 as an entity separate from biometric key 100, authentication module 310, and application 330. As the Specification states, “[t]rusted key authority 320 is a third-party authority that is present in some embodiments to provide enhanced security.” Ex. 1001, 6:59–61. Examples of trusted key authorities include “a government official, a notary, and/or an employee of a third party which operates the trusted key authority, or another form of witness.” Id. at 7:56–61. Petitioner’s citations to the applicant’s statement during the prosecution of the parent ’730 patent are also consistent with a third-party trusted authority being an entity separate from the principal parties to a transaction, as is the Declaration of Dr. Nielson. Ex. 2001, 6–8; Ex. 2003 ¶¶ 70–74. Thus, we construe “third-party trusted authority” to mean a trusted authority that is an entity separate from the parties to a transaction.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 10,698,989

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.