• 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
• 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
• Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution denied
  PTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.

  RulingsInstitution decision

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

    “Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10

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

    “2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8

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

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

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

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,003,135
• Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution denied
  PTAB · Aug 17, 2017 · IPR2017-00824 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Kingston did not show a reasonable likelihood that claims 1–3, 6–8, 11–15, 23–28, and 36–39 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we are not persuaded, on this record, that Petitioner has established a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny the Petition and decline to institute an inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39 of the ’802 patent.” slip op. at 2

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

    “A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113. This analysis applies similarly under both the broadest reasonable construction and district court-type claim construction standards. See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)” slip op. at 8

  • BurdenNot shown unpatentable

    “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14

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

    “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,088,802
• 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
• Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution denied
  PTAB · Jul 6, 2016 · IPR2016-00504 · APJ Kalyan K Deshpande · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1-3, 5-10, 12, 13, and 15-20 were unpatentable.

  RulingsInstitution decision

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

    “partes review of claims 1‒3, 5‒10, 12, 13, and 15‒20 of U.S. Patent No. 8,437,883 B2 (Ex. 1002, “the ’883 patent”). Paper 1 (“Pet.”). Dominion Resources, Inc. and Virginia Electric and Power Company (collectively, “Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 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.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims. We, therefore, deny the Petition.” slip op. at 2

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

    “Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒15. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒15; see Pet. 23. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of CPVMs are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.”” slip op. at 8

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

    “We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[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, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’883 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 16. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 16‒17. Although a determination that the cited prior art is analogous to the ’883 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning.” slip op. at 15

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

    “We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,437,883
• Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution denied
  PTAB · Jul 6, 2016 · IPR2016-00503 · APJ Kalyan K Deshpande · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–5, 7–13, 15, 16, and 18–34 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[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, 550 U.S. at 418.” slip op. at 16

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

    “We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

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

    “Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒16. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒16; see Pet. 22. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of the CPVMS are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.” Patent Owner further argues that Deaver fails to disclose “add[ing] to the subset the at least one other sensor that sent the respective reporting signal,” as recited by independent claim 1. Prelim. Resp. 8‒14. We agree with Patent Owner. Petitioner contends that Deaver discloses voltage adjustment instructions based on the reported measurement data, and “because any number of customer premises may be selected for voltage monitoring, the reporting meter could be added to the monitored subset.” Pet. 23 (citing Ex. 1004, 4:45‒60, 5:47‒62, 6:46‒51; Ex. 1001, 38‒42). However, as argued by Patent Owner, Deaver is silent as to adding to the subset of CPVMs being monitored. See Prelim. Resp. 9. At best, Petitioner’s argument that any number of customer premises may be selected, and meters could be added to the subset is an argument towards the obviousness of this limitation, not anticipation, as challenged by Petitioner. See Pet. 23. Accordingly, we agree with Patent Owner that Deaver fails to disclose “wherein the voltage controller is further configured to add to the subset the at least one other sensor in response to receiving the reporting,” as recited by independent claim 1.” slip op. at 8

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

    “We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[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, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’510 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 14. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 14‒15. Although a determination that the cited prior art is analogous to the ’510 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning. We further agree with Patent Owner that testimony from Dr. Kezunovic’s Declaration should not be incorporated in to the Petition. See Prelim. Resp. 31‒33. The Petition itself does not address a rationale to combine Deaver, LaPlace, Richeson, Bell, Keefe, and ANSI C84.1-2006, and further does not direct us to discussion in Dr. Kezunovic’s Declaration for a rationale to combine. At best, Dr. Kezunovic asserts that “DMS, smart meters, and substations are well-known prior art elements, whereby their combination yields predictable results.” Ex. 1001, 95; see Ex. 1001, 176, 238, 250. However, Dr. Kezunovic does not provide any explanation as to why the combination of “DMS, smart meters, and substations” would yield predictable results. Accordingly, even if we were to incorporate Dr. Kezunovic’s Declaration in to the Petition, which we do not, we are not persuaded that Petitioner has set forth articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness. As such, Petitioner has not demonstrated a reasonable likelihood in prevailing in its obviousness challenges.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,577,510
• Securus Technologies, Inc. v. Global Tel*link Corp.Institution denied
  PTAB · Jun 8, 2016 · IPR2016-00269 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable as obvious over the asserted references.

  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 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 Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”). Thus, Petitioner must explain how the combination of Rae and Diener would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so. slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Second, although Petitioner cites to Declaration Testimony, Mr. Lipoff merely repeats the unpersuasive, conclusory assertions in the Petition. Compare Ex. 1002 ¶¶ 72–74, with Pet. 25–27. Mr. Lipoff does not provide further explanation or support as to how a disclosure of a cellular telephone using a wireless access point to place a call controlled by a call processing system, capturing call details, and notifying an investigator about the call would have conveyed to one of ordinary skill in the art “producing a detection signal” as required by claim 1.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Mr. Lipoff, opines that a person of ordinary skill in the art relevant to the ’229 patent “would have held a bachelor’s or master’s degree in electrical engineering or a similar field and had at least three years of experience working with radio frequency communications systems, such as cellular devices.” Ex. 1002 ¶ 37. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’229 patent. See generally Prelim. Resp. Based on our review of the ’229 patent, the types of problems and solutions described in the ’229 patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner and Patent Owner each propose constructions for the claim limitation “plurality of cellular telephone transmission detectors.” Pet. 9–11; Prelim. Resp. 6–11. For purposes of this Decision and based on the record before us, we are not persuaded that any specific claim construction must be made in this decision to determine the efficacy of Petitioner’s grounds of unpatentability.” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,606,229
• Securus Technologies, Inc. v. Global Tel*link CorporationInstitution denied
  PTAB · Jun 3, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Institution

  The Board denied institution on claims 1–55 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  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 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 Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (internal quotation marks removed). Thus, Petitioner must explain how the combinations of Bulriss, Hesse, and Rae would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so. slip op. at 6

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

    “teaches away from establishing connections at a scheduled time because doing so would impede or delay court proceeding. Prelim. Resp. 21–25. As Patent Owner explains, the scheduling of visits to resolve issues during a court proceeding would cause unnecessary delay to those same proceedings, because at the time that the judge determines that such communications are needed, per Bulriss, they would not be scheduled as described in Hesse. Id. at 22–23. Patent Owner also points out that the subject communications arise ad hoc, they need to be addressed without delay, and are not amenable to scheduling. Id. at 23. Lastly, Patent Owner emphasizes that Bulriss is concerned with such delays and would teach away from the scheduling provided in Hesse. Id. at 24–25 (citing Ex. 1005, 2:33–67, 5:51–64, 6:4– 10). We agree with Patent Owner that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits, per claims 1 and 30, in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. See Pet. 20–21 (citing Ex. 1002 ¶¶ 74, 86). Thus, for this additional reason, we are persuaded that Petitioner has not made a sufficient showing that Bulris and Hesse would have rendered claims 1 and 30 obvious.” slip op. at 12

  • 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. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  Claim construction§ 103 obviousnesscites KSR
  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.