• Samsung Electronics Co., Ltd. v. G+ Communications, LLCInstitution denied
  PTAB · Oct 13, 2023 · IPR2023-00665 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 9 was anticipated by Malladi or that claims 1–6 and 9–14 were obvious over Malladi-based combinations.

  RulingsInstitution decision

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

    “In order to reach item 846, the UE must first perform step 820, which says “Decode the PDCCH for possible assignment.” Ex. 1005, Fig. 8. In order to decode a PDCCH, the PDCCH must first be detected. Additionally, the [0, 0] code which is sent in step 846 of Malladi Figure 8 also shows that the PDCCH was detected but improperly decoded. Malladi Figure 6 “shows four formats for fixed-size CQI and ACK information.” Ex. 1005 ¶ 16. In each of those formats, [0, 0] means “Missed PDCCH.” Ex. 1005, Fig. 6. Malladi further explains, in a detected, but incorrectly decoded such that the control information is missed: “[T]he UE incorrectly decodes the PDCCH and misses the control information.” Ex. 1005 ¶ 61 (emphasis added). In summary, the portions of Malladi describe a situation where a PDCCH was detected but incorrectly decoded, leading to a situation where the control information was missed/not received by the UE. In other words, Petitioner has not sufficiently shown, based on the current record, that Malladi discloses “when the user equipment fails to detect the physical downlink control channel corresponding to the transmitted data in the sub-frame which transmits the data” as recited in claim 9. Accordingly, Petitioner has not shown a reasonable likelihood of” slip op. at 16

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

    “Ex. 1001, 4:18–31 (highlighting added). The yellow highlighted language above describes a situation in which the UE “fails to detect.” The paragraph goes on with the disjunctive “or” (red) followed by a second situation where the UE “fails to receive the data” (light blue). See Ex. 1001, 4:18–31. The use of the disjunctive “or” implies that the failing to detect is different than failing to receive. Indeed, if the ’881 patent considered the fails to receive the same as fails to detect, there would be no need to list both items. However, the language recited in claim 9 only recites “fails to detect,” thus indicating that fails to receive is not encompassed by the claim. Thus the issue is whether Malladi discloses a UE that fails to detect or fails to receive. Based on the current record, Petitioner has not sufficiently shown that Malladi discloses a UE that fails to detect as recited in claim 9.” slip op. at 15

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

    “Claim 1, like claim 9, recites substantially the same limitation discussed in the preceding section. Compare limitations [9.pre-1] and [9.c] (Ex. 1001, 12:55–58 and 13:18–20) with limitation [1.e] (Ex. 1001, 11:44– 47). Petitioner argues that “[t]he Malladi-TDTech combination discloses claim element[] . . . 1.e for substantially the same reasons Malladi discloses claim element[] . . . 9.c, . . . which recite the same or substantially the same features.” Pet. 53 (omission relate to other claim limitations). Petitioner further argues that the difference between Malladi and the Malladi-TDTech combination are “immaterial” for this limitation. Pet. 54. Stated differently, Petitioner does not argue that TDTech cures the deficiency associated with limitation [1.e]. deficiency associated with limitation [9.c]. Pet. 57. Nor does Petitioner argue that any of the other references it relies on relate to limitation [1.e] or [9.c]. See Pet. 58–71. Accordingly, for the reasons discussed in the previous section, Petitioner has not shown a reasonable likelihood of showing that the subject matter of claims 1–6 and 9–14 would have been unpatentable based on Malladi and TDTech, either alone or in combination with additional references. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Patent Owner argues that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 15. and undisputed by Patent Owner, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,881
• Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing denied
  PTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2

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

    “We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3

  • BurdenDecided for patent owner

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 9,007,015
• Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyInstitution denied
  PTAB · Feb 5, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented by the parties, we determine that Petitioner has not shown a reasonable likelihood of prevailing on at least 1 of the challenged claims. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s articulation of the level of ordinary skill in the art is supported by the Declaration of Dr. Hartup. Ex. 1003 ¶ 46. It also appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, it is not objected to by Patent Owner. We adopt Petitioner’s articulation of the level of ordinary skill in the art, but delete the qualifier “a minimum of,” to keep that level from being vague and extending to a range that corresponds to the skill level of an expert. Thus, we regard the level of ordinary skill as being at the level of a person with “a bachelor’s 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the challenged patent has an effective filing date after March 16, 2013 (Ex. 1001, Codes (22), (63)), the effective date of the applicable AIA provisions, we refer to the post-AIA versions of §§ 102 and 103. degree in electrical engineering, or its equivalent, and two years of experience in studying or designing battery charging systems.” B.” slip op. at 9

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

    “Petitioner has not proposed a specific construction for any term, and is satisfied with their ordinary and customary meanings under the Phillips standard. Pet. 7. For the term “output port,” however, Petitioner states: “Petitioner has recognized the apparent construction given that term by Patent Owner in related litigation, and analyzed the term under both that more expansive interpretation, and its ordinary and customary meaning.” Id. at 7 n.1. Patent Owner also has not proposed a construction for any term, including the term “output port,” and asserts that no express construction for any term is necessary. Prelim. Resp. 7–8. For purposes of this decision, there is no dispute between the parties that would require claim construction to resolve. C.” slip op. at 11

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

    “The limitation refers to the action of the claimed microcontroller, which receives input signals from the vehicle isolation sensor and the reverse polarity sensor and provides an output signal to the power switch. Ex. 1001, 8:23–25. According to this limitation, if a signal indicates absence of a vehicle battery, or if a signal indicates improper polarity connection to the vehicle battery, the power switch cannot be turned on. Facially, in its broadest possible reading, the requirement might allow the switch to be governed by one condition, not necessarily both. Neither party has read the language that way. Petitioner has applied the language as meaning both conditions govern operation of the power switch. Pet. 1, 4, 15–16. Patent Owner’s argument is consistent with that reading. Prelim. Resp. 15–18, 21–25. We have no reason to disagree with that understanding of the claim language, in light of the Specification of the ’015 patent.4 See e.g., Ex. 1001, 4:32–38 (“A smart switch FET circuit 15 electrically switches the handheld battery booster lithium battery to the vehicle’s electric system only when the vehicle battery is determined by the MCU 1 to be present (in response to a detection signal provided by isolation sensor 12) and connected with the correct polarity (in response to a detection signal provided by reverse sensor 4 The most expansive reading permitted by the literal language and not precluded by an express disclaimer is the broadest possible interpretation not satisfying even the broadest reasonable interpretation standard. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). 10).”). Thus, the power switch can be turned on only in response to a signal indicating presence of a vehicle battery and a signal indicating proper polarity connection to that vehicle battery. Petitioner has not made a sufficient showing that that is true in Richardson.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,007,015
• Blackberry Corp. v. Facebook, Inc.Institution denied
  PTAB · Mar 5, 2020 · IPR2019-01596 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1 and 3-6 were anticipated by Peinado or obvious over Peinado and McKelvey.

  RulingsInstitution decision

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

    “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 did not demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. We, therefore, do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “of invention of the ’432 patent “would have had a Bachelors of Science degree in computer or electrical engineering, or equivalent, and 2–3 years of relevant experience working with computer security technology.” Pet. 89. Patent Owner states that “[a] person of ordinary skill in the art . . . would have had approximately the level of education and experience identif[ied] by Petitioner, or a similar level of education and/or experience, with somewhat more education substituting for somewhat less work experience and vice versa.” Prelim. Resp. 4 (citing Storer Decl. ¶ 16). Given the lack of dispute, and for purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, as it is consistent with the level of skill in 5 the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

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

    “using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes that the term “dedicated security processor” means “a processor dedicated to providing security functions.” Pet. 910. Patent Owner states that in the copending litigation, the parties have agreed to this construction, and, therefore, Patent Owner does not dispute the proposed construction. Prelim. Resp. 45. For purposes of this decision, we adopt the construction of “dedicated security processor” proposed by Petitioner, as stated above, and agreed to by Patent Owner in the co-pending litigation. The remainder of the claim we interpret in accord with the claim’s ordinary meaning to one skilled in the art at the time of invention, in light of the teachings of the specification and the prosecution history, and do not find it necessary to provide any express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6

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

    “correctly notes, Peinado’s DRM system and the rendering application are both implemented on a computing device with a single processor. Prelim. Resp. 13. As stated above in the summary of Peinado, security processor 64 runs DRM system 32p in the portable device to authenticate the digital content downloaded from another computer. Ex. 1004, 37:6266. The same DRM system 32p renders the digital content on the portable device. Id. at 36:5362. The claim requires that the “dedicated security processor” validate the file and user access. The claim also requires that the “dedicated security processor” provide the file to “an other processor” that continues processing the file after the user has been validated. There is no “providing” step in Peinado’s security processor 64 embodiment. The same processor performs both the validating and the processing of the file after validation. Petitioner also points to the disclosure of the decrypted content being provided to the rendering application. See Pet. 19. But that “providing” is (1) not shown occur in the embodiment of security processor 64 and (2) not shown to involve “an other processor.” Pointing to another application receiving the content in a completely different embodiment in Peinado is not sufficient to show that Peinado discloses the limitation. Accordingly, we find that the Petition does not show adequately that Peinado anticipates claim 1 of the ’432 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,228,432
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

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

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

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

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370

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.