• Akamai Technologies, Inc. v. Equil IP Holdings LLCInstitution denied
  PTAB · Jul 21, 2023 · IPR2023-00332 · APJ Richard M Lebovitz · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 unpatentable: Tso did not disclose the claimed request information, and Samaniego was not prior art.

  RulingsInstitution decision

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

    “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). After considering the Petition, the Preliminary Response, the Preliminary Reply Brief, the Preliminary Sur-reply, and the evidence of record, for the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one claim challenged in the Petition. Hence, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in computer systems, computer science, or the equivalent thereof, and at least two years of experience with networked media delivery or related technologies.” Pet. 10 (citing Ex. 1003 ¶¶ 45–46, 48–49). Patent Owner does not dispute Petitioner’s statement of the level of ordinary skill in the art. Prelim. Resp. 8. Petitioner’s definition of a POSITA is consistent with the level of skill disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for the purpose of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Tso discloses predetermined “selection criterion may comprise, for example information contained in . . . a data packet received by transcoding server 34.” Ex. 1004, 6:66–7:2. However, contrary to Dr. Madisetti’s testimony,4 the cited disclosure in Tso does not identify the sender of the packet as the network client 12 nor does Tso state that any of the nine disclosed predetermined selection criteria are contained in a data packet. Dr. Madisetti’s statement is conclusory, omitting any reasoning as to why one of ordinary skill in the art would have concluded that the “content characteristics” are received in a data packet from the network client 12, when such information is not explicitly stated in the portion of Tso 4 “The ‘request packet’ sent by the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that includes ‘selection criterion,’ which is used to specify what transcoding should be applied to the content. Tso, 6:64- 8:9.” Ex. 1003 ¶ 66 (emphasis added) (footnote omitted). referenced by Dr. Madisetti. We do not accord weight to conclusory expert testimony. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 n.5, 1360 (Fed. Cir. 2019).” slip op. at 21

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

    “As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), only those terms that are “in controversy, and only to the extent necessary to resolve the controversy,” need to be construed. See also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid to inter partes reviews). Here, a construction of “content generation operations” and “transformation operations” is not necessary to resolve the unpatentability issues before us. Consequently, we do not address Petitioner’s proffered claim constructions.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,158,745
• Bio Imaging SAS D/B/A Vilber v. Spectral Instruments Imaging, LLCInstitution denied
  PTAB · Jul 19, 2023 · IPR2023-00449 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable, principally because Olympus did not disclose the claimed support structure mounting both the assembly and camera.

  RulingsInstitution decision

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

    “As we determined, the “support structure” requires that it is suitable to support the claimed “excitation light source assembly” and camera. See Section IV.B above. Petitioner points to structure of Figure 1 of Olympus (namely, base 6, shaft 7, bearing 8, C-ring 8b, and associated hardware) that is suitable to support the light source assembly but not the camera. Petitioner argues that “photodetector/CCD camera 24” is discussed in Olympus. See Pet. 35–36 (citing Ex. 1040 ¶¶ 50, 52, 53). But Petitioner does not show the camera is supported by the same structure in Figure 1 that supports the light source assembly. For Figure 22’s embodiment, Petitioner apparently contends the fluorescence detecting unit 28 is the claimed camera. See Pet. 36–37 (citing Ex. 1040 ¶¶ 200–210, Fig. 22 (annotated at Pet. 37); Ex. 1004 ¶ 65). Specifically, Petitioner argues “the embodiment of FIG. 22 (which uses the same reference numerals) light source holding member 9 is fixed and is mounted to a cylindrical fixed shaft 7 and associated hardware to position it with respect to the camera and to maintain them above sample table 1.” Id. at 36 (emphasis added). But Figure 22 and the associated description do not describe a “camera.” See also Prelim. Resp. 17 (citing Ex. 2001 ¶¶ 29–30) (arguing Figure 22’s embodiment does not include a camera). Petitioner does not show that the fluorescent detector is the equivalent of a camera or that, if it is a “camera,” that it is supported by the light source holding member. This missing proof is not met by the Petitioner’s unsupported argument. The Talghader Declaration does not include testimony that the “support structure” mounts the claimed camera, instead pointing out that “[l]ens 5, lens 23, and photodetector/CCD camera 24 are on optical axis 5a.” Pet. 36 (citing Ex. 1004 ¶¶ 64–66). The Talghader Declaration specifically directed to limitation 1.a and the “support structure” term lacks any discussion or analysis of the “support structure” term. See Ex. 1004 ¶¶ 86– 87). Olympus does describe, in Figure 6, a fluorescence detection unit 28. Ex. 1040 ¶¶ 71–72, Fig. 6. However, because both Figure 6 and Figure 1 are described as illustrating the same embodiment, the camera in that embodiment is specifically portrayed in Figure 1, and Figure 6 does not indicate that it is mounted to the support structure. Id. ¶ 216 (page 29) (describing both Figures 1 and 6 as “according to a 1 embodiment”).” slip op. at 17

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

    “The ’516 patent describes the support structure by saying that the “excitation light source assembly” is provided with a “suitable support structure 32.” Ex. 1001, 4:24–26. In addition, Figures 2 and 3 are referenced specifically. Id. Later in the Specification it is explained that The support structure 32 is configured to receive camera 36, control system 40, as well as various other components and systems required for operation of the imaging system 12. However, because such various other components and systems that may be required or desired for the operation of the imaging system 12 are not required to understand or practice the present invention, such additional components and systems will not be described in further detail herein. Id. at 6:25–32. We draw two conclusions from the Specification. First, no specific support structure is necessary. Second, the “support structure” is “not required to understand or practice the present invention.” With the preceding in mind, we determine that a “support structure” means a structure that is suitable to support the claimed “excitation light source assembly” and camera.” slip op. at 10

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

    “C. Legal Standard for Anticipation In order for a prior art reference to serve as an anticipatory reference, it “must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”). As the Federal Circuit has held: This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). Further, “[a] claim limitation is inherent . . . if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless, 344 F.3d 1186, 1192 (Fed. Cir. 2003).” slip op. at 11

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

    “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the Board must consider whether a person of ordinary skill would have been motivated to combine the prior art to achieve the claimed invention. NuVasive, 842 F.3d at 1381. As the U.S. Court of Appeals for the Federal Circuit found, in quoting from the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007), “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir. 2017). slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,901,516
• Nokia Of America Corporation v. TQ Delta, LLCInstitution denied
  PTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, 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 patent owner constructionDecided for patent owner

    “Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15

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

    “Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27

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

    “Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,453,881
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00357 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show Fox was a publicly accessible printed publication before the critical date.

  RulingsInstitution decision

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

    “particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and 7 We note that Petitioner does not attempt to establish that Fox was publicly accessible based on other theories such as, for example, actual dissemination. circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Schmidt, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field.” Pet. 8 (citing Ex. 1003 ¶¶ 32–34). Patent Owner does not offer a different definition, and Patent Owner” slip op. at 5

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

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 6

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,209,411
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00428 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not establish that Erdogan was publicly accessible before the critical date and thus prior art.

  RulingsInstitution decision

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

    “particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in electrical engineering or computer science or related field plus at least two years of professional experience in the field of relational databases and/or user interfaces thereto.” Pet. 7 (citing Ex. 1003 ¶ 36). Patent Owner does not offer a different definition, and Patent Owner contends that Petitioner has not met the “reasonable likelihood” standard for institution even if we were to apply Petitioner’s definition. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’928 patent and the asserted prior art.” slip op. at 6

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

    “37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 7

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,280,928
• Oneplus Technology (Shenzhen) Co., Ltd. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Mar 8, 2022 · IPR2021-01400 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4–7, or 13–16 were unpatentable.

  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). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’708 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “at least an undergraduate degree in electrical engineering, or equivalent education, and two years of work experience in the field of battery charging systems, or equivalent work experience or training.” Pet. 18–19 (citing Ex. 1005 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Joshua Phinney. Ex. 1005 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. Prelim. Resp. 10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 6

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

    “using the same standard used in a civil action under 35 U.S.C. § 282(b), 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 construing the phrase “detecting, by an apparatus, an availability of a charger adapter” in claim 1, and similar phrases in claims 14 and 15, to mean “detecting charging energy (e.g., voltage and/or current) from an adaptor.” Pet. 19–21 (emphasis omitted). Patent Owner does not propose an express construction for any claim terms. Prelim. Resp. 11. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 7

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

    “Petitioner asserts that Kao’s Figure 4 shows that the tCC calculation “is performed in the constant-current stage.” Pet. 37–38; Ex. 1005 ¶ 87. Petitioner does not support that assertion sufficiently. The evidence of record indicates that Kao’s Figure 4 is a graph that shows what tCC “represent[s],” namely, that tCC is the time for a battery pack “to go from the pre-charge voltage to the charged voltage.” Ex. 1003, 4:49–50, 4:61–63, Fig. 4. But Petitioner does not explain specifically how Figure 4 discloses calculating tCC if the battery charging point is in the constant current phase. See Pet. 37–38; Ex. 1003, 4:49–5:8, Fig. 4; Ex. 1005 ¶ 87. Thus, on this record, Petitioner does not show sufficiently that Kao discloses calculating tCC if the battery charging point is in the constant current phase.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,712,708
• Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.

  RulingsInstitution decision

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

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

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

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

  § 102 anticipationcites Phillips
  Patents in suitUS 9,031,278
• Bright Data Ltd. v. Metacluster LT, UabInstitution denied
  PTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution

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

  RulingsInstitution decision

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

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” slip op. at 2

  • Skill levelSkill level board ownOther

    “Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11

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

    “construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,601,948
• Juniper Networks, Inc. v. Correct Transmission, LLCInstitution denied
  PTAB · Nov 19, 2021 · IPR2021-00984 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted obviousness grounds taught or suggested the claimed responsive fragmentation.

  RulingsInstitution decision

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

    “Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and Reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one Challenged Claim of the ’669 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we do not institute an inter partes review of the ’669 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and fewer years of design and development experience. Pet. 5–6 (citing Ex. 1003 ¶¶ 59–63). “Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 37. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang. Ex. 1003 ¶¶ 59–63.” slip op. at 7

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

    “C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 6 (“Petitioner construes each term as having its ordinary and customary meaning.”); Prelim. Resp. 11 (“Patent Owner does not propose any claim term departs from its ordinary and customary meaning.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8

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

    “While not showing a teaching away, the above statement in Sourani contrasting stop points and fragmentation does show that one of ordinary skill in the art reading Sourani would know that the stop points in Sourani are not intended to be fragments. Petitioner has not explained sufficiently why, despite this contrast, one of ordinary skill would use fragmentation with the system of Sourani.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,876,669
• Juniper Networks, Inc. v. Correct Transmission, LLCInstitution denied
  PTAB · Oct 22, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution on claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 because neither obviousness ground showed a reasonable likelihood of success.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 of the ’928 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’928 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a Master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and less years of design and development experience. Pet. 7 (citing Ex. 1003 ¶¶ 67–71). Patent Owner does not present an alternative definition at this stage of the proceeding. Prelim. Resp. 30. We regard Petitioner’s proposed definition as reasonable, and” slip op. at 11

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

    “C. Claim Construction Petitioner does not propose any claim terms for construction. Pet. 7 (“For purposes of this proceeding, Petitioner construes each of the ’928 claim terms as having its ordinary and custom[ary] meaning.”). Although, Petitioner does submit that, “[f]or purposes of this IPR only, Petitioner relies on the claim scope positions Patent Owner has advanced in district court for ‘port definer module.’” Pet. 8. Similarly, Patent Owner argues each claim term should have its ordinary and customary meaning, except that, as in the parallel district court proceeding, the function of alleged means-plus-function term “port definer module” should be construed to be “designating any one physical link of the logical link and examining the designated link of the logical link.” Prelim. Resp. 11–12. We note that, in the Preliminary Response, Patent Owner does not appear to identify any structure in the Specification for performing that function. See generally Prelim. Resp. Regardless, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12

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

    “Petitioner has not explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have (1) taken Y.1731, which says nothing concerning aggregated physical links with a single logical link to which packets are directed; (2) then turned to the architectural basis for Y.1731, namely “Ethernet specification G.8010/Y.1306”; (3) then turned to standards “IEEE 802.1D, 802.1Q, and 802.3,” which are “account[ed] for” by G.8010/Y.1306, and specifically selected to pursue 802.3 from among those; (4) then, without any reference or indication in Y.1731 itself, turned specifically to standard IEEE 802.3ad within the set of 802.3 standards, and specifically to its disclosure of aggregated physical links with a single logical link; and then (5) upon making all of these connections, understood Y.1731 itself to disclose or teach aggregated physical links with a single logical link, particularly in the context of the Challenged Claims as a whole. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”). Although “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” (KSR, 550 U.S. at 421), the Federal Circuit has observed that “‘the prejudice of hindsight bias’ often overlooks that the ‘genius of invention is often a combination of known elements which in hindsight seems preordained.’” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,768,928

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.