• Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution denied
  PTAB · May 28, 2024 · IPR2024-00481 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 12, 14, or 16–18 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 10–11. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 18. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. See 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 11

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

    “Lane’s orientation information would generate information indicative of a current mode of operation as claim 18 requires. Instead, we agree with Patent Owner that Petitioner has not carried its burden to establish a reasonable likelihood of prevailing in showing that a person of ordinary skill in the art would have, based on the teachings of Lane or other cited art, used an accelerometer that generates orientation information indicative of the current mode of operation. See Prelim. Resp. 35–42. Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. Lane does not teach using the accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 29.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,563,229
• Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution denied
  PTAB · May 28, 2024 · IPR2024-00480 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11, 19–21, and 23–25 were obvious over the asserted grounds.

  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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 9–10. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 17. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. See 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 12

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

    “Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6:6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. at 5:25–31. Lane does not teach using an accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 30. The spatial orientation of Lane’s keyboard or screen relative to the earth’s gravity, however, does not reliably9 indicate the device’s current display mode because, at any given moment, the Lane device could be held at different angles such that orientation relative to gravity does not correlate with the display mode. For example, Lane Figure 13 teaches that its keyboard could be at an angle (relative to earth’s gravity) while in laptop mode. Ex. 1005, Fig. 5; Prelim. Resp. 41–42. We reproduce Lane Figure 13 as annotated by Patent Owner below.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,563,229
• Asustek Computer Inc. / Asus Global Pte. Ltd. et al. v. Litl LLCInstitution denied
  PTAB · May 23, 2024 · IPR2024-00532 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–10 and 23 because Petitioner did not show a reasonable likelihood that a skilled artisan would replace Lane’s hinge with Misawa’s single-pivot hinge.

  RulingsInstitution decision

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

    “defines a single longitudinal axis running along an interface between the display component and the base” where “the display component and the base are rotatable about the single longitudinal axis.” Ex. 1001, 17:15–21 (the “single axis limitation”). In each of its seven grounds, Petitioner asserts that this claim limitation would have been obvious because “a POSA would have been motivated and able to adapt the portable computer 10 of Lane to use a single-pivot hinge like the hinge 20 taught in Misawa.” Pet. 29; see also id. at 32 (“In the portable computer 10 of Lane modified to implement a singlepivot hinge like the hinge 20 of Misawa, the hinge would define a ‘single longitudinal axis.’”). Our decision turns on whether Petitioner has carried its burden to establish a reasonable likelihood of prevailing on its assertion that the POSA would have been motivated to use a single-pivot hinge, like that disclosed in Misawa, in Lane’s computer, as proposed in the Petition. For the reasons discussed below, we find that Petitioner has not carried its burden. slip op. at 11

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

    “Having determined that Petitioner’s proposed modification provides a modest benefit, we now consider whether such modification has any drawbacks. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (explaining that, in an obviousness inquiry, “[t]he benefits, both lost and gained, should be weighed against one another.”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)). Here, by Petitioner’s own admission, modifying Lane’s hinge in the manner Petitioner proposes comes at the expense of the hinge’s ability to rotate through a full 360°, which allows Lane’s computer to function as a tablet. Pet. 17 (explaining that Misawa’s single axis hinge “can open beyond the stated 300° (but less than 360°)”), 29 (explaining that a dual-pivot hinge is “unnecessary except to allow the display component to rotate far enough to fold flat against the bottom of the base to deploy the portable computer in tablet mode”); Ex. 1004 ¶¶ 110 (testimony of Dr. Wolfe echoing statement in the Petition that Misawa’s hinge cannot rotate through the full 360°), 114 (testimony of Dr. Wolf explaining that “the use of a dualpivot hinge would make it easier to design a portable computer having a display that can rotate far enough to fold flat against the bottom of the base to deploy the portable computer in a tablet mode”); Ex. 1017, 3:5–14 (Lane, teaching that allowing 360° of rotation allows a laptop computer to function as a “pen-based computing tablet”).” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “motivated to replace Lane’s hinge with a single axis hinge because a single axis hinge is less expensive and more reliable than Lane’s biaxial decouplable hinge. Pet 29; Ex. 1004 ¶¶ 113, 114, 131 (testimony of Dr. Wolfe to the same effect). Patent Owner argues this proffered motivation is supported only by the conclusory testimony of Dr. Wolfe. Prelim. Resp. 21. Patent Owner also argues that neither Petitioner nor Dr. Wolfe attempts to explain or quantify just how much of a benefit using a simpler hinge provides. Id. We agree that Dr. Wolfe’s testimony on this point is somewhat conclusory. See, e.g., Ex. 1004 ¶¶ 113, 114, 131 (citing only limited supporting evidence). Nonetheless, we give Dr. Wolfe’s testimony some weight because it is consistent with the notion that a simpler device with fewer moving parts is likely to be somewhat less expensive and more reliable than a more complicated device. See Ex. 1016 ¶ 9 (prior art reference cited by Dr. Wolfe (Misawa), teaching that the mechanism of a hinge having a biaxial structure is “likely to be biaxial decouplable hinge with Misawa’s single axial hinge would provide a modest benefit.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the time of the ’688 Patent (“POSA”) would have had a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject, and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices. Alternatively, a POSA would have had an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the design and architecture of laptop computers and other portable electronic devices. A POSA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices, as well as designs of user interfaces employed and displayed by computer operating POSA could have acquired similar skills and knowledge by other means. Pet. 7 (citing Ex. 1004 ¶ 15). Patent Owner does not dispute Petitioner’s identification of the person of ordinary skill in the art. See generally Prelim. Resp. As Petitioner’s description of the person of ordinary skill is consistent with the subject matter of the ’688 patent and with the prior art of record, we apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,289,688
• NXP USA, Inc. v. Bell Semiconductor, LLCInstitution denied
  PTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on 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 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “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.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8

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

    “[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,535,330
• NXP USA, Inc. v. Bell Semiconductor, LLCInstitution denied
  PTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22

  • BurdenDecided for patent owner

    “For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,646,091
• Google LLC v. Geoscope Technologies Pte. Ltd.Institution denied
  PTAB · Feb 20, 2024 · IPR2023-01214 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over Almgren or Haartsen, alone or with other prior art.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “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) (2018). Upon consideration of the Petition, the Preliminary Response, the Petitioner Preliminary Reply, the Patent Owner Preliminary Sur-reply, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’264 patent. Accordingly, for the reasons that follow, we decline to institute inter partes review of claims 1, 3, 6, 11, 13, 15, 20, 21, 23, and 25–27 of the ’264 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active 8 Petitioner asserts that Haartsen is prior art under § 102(b). Pet. 6. 9 US 5,491,837, filed March 7, 1994, issued February 13, 1996 (Ex. 1005, “Haartsen”). workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, without the qualifier “at least” because its use introduces vagueness, for the purposes of this Decision because it is consistent with the ’264 patent and the asserted prior art.” slip op. at 8

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

    “Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

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

    “claim limitations at issue, and, specifically, the burden extends to negative limitations such as “without disabling any other communication.” See IBM v. Iancu, 759 F. App’x 1002, 1011 (Fed. Cir. 2019) (explaining that a reference’s silence was not by itself sufficient to establish that the reference teaches a process involving only one user authentication action). Petitioner does not appear to dispute its required showing, that is, Petitioner does not argue that the absence of an element in the prior art is sufficient per se to satisfy a negative limitation. Rather, the Petition affirmatively asserts that Almgren discloses or teaches the limitation “without disabling any other communication.” Pet. 25–26. Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,320,264
• Infinera Corporation v. Alexander Soto And Walter SotoInstitution denied
  PTAB · Dec 4, 2023 · IPR2023-00834 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 10–14, and 16–21 were obvious over the cited combinations.

  RulingsInstitution decision

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

    “We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited step of “converting the first electrical binary data signal in the pluggable optical transceiver module to a first electrical m-ary modulation signal.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Each of claims 2, 3, 5, 10, 13, 14, and 16–21 depends directly or indirectly from independent claim 1, and Petitioner challenges these claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:23–28, 32–35, 16:9–11, 16:18–25, 16:30–43; Pet. 46–56. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of these dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5, 10, 13, 14, and 16–21. 3. Asserted Obviousness of Claims 11 and 12 over Pang, Vrazel and Yee (Ground 2). Claims 11 and 12 depend directly from claim 1. Petitioner does not rely on Yee to remedy the deficiencies discussed above concerning the “converting” to “m-ary modulation” signal step, but rather relies on its arguments associated with claim 1. See Pet. 59–60. We already addressed those arguments, and we find those arguments unavailing for the reasons stated above. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 11 and 12.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts that a POSITA would have “at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing,” wherein “[m]ore experience can supplement less education and vice versa.” Pet. 6 (citing Ex. 1003 ¶ 38). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 9

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,887,795
• Infinera Corporation v. Alexander Soto And Walter SotoInstitution denied
  PTAB · Dec 4, 2023 · IPR2023-00838 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show that Vrazel’s encoder or encoder and pre-distorter provided the claimed m-ary modulator for claims 1–3, 5, 6, 8, 10–17, 22, and 23.

  RulingsInstitution decision

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

    “We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited “m-ary modulator” in any of the challenged independent claims. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1, 22, or 23 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel.” slip op. at 20

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

    “Because it is dispositive, we focus our analysis on each independent claim’s recitation of “an m-ary modulator for increasing the number of bits per symbol in the first electrical data signal to produce a first m-ary modulation signal.” Ex. 1001, 15:6–8 (claim 1), 17:13–15 (claim 22), 18:9– 11 (claim 23). In addressing this limitation, Petitioner relies solely on Vrazel, which Petitioner contends “discloses this limitation in at least two ways.” Pet. 28 (addressing claim 1), 64 (addressing claim 22 by referring to analysis for claim 1), 66 (addressing claim 23 by referring to analysis for claim 1).” slip op. at 16

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such 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) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,771,181
• Infinera Corporation v. Alexander Soto And Walter SotoInstitution denied
  PTAB · Dec 4, 2023 · IPR2023-00835 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–7, 9, and 11–20 were unpatentable over Pang and Vrazel.

  RulingsInstitution decision

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

    “We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing.” Pet. 7. Petitioner adds that “[m]ore experience can supplement less education and vice versa,” and supports its proposal with testimony by Dr. Min. Id.; Ex. 1003 ¶ 41. Patent Owner does not specifically address the level of ordinary skill in its Preliminary Response. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Min’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such 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) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6–7. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,263,723
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 6, 2023 · IPR2023-00677 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–19 were obvious over Rockwood and Xie.

  RulingsInstitution decision

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

    “4. Summary In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Rockwood and Xie. Claims 2–7, 9–15, and 17–19 depend from claims 1, 8, or 16. Accordingly, we also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion as to these dependent claims. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’045 patent. Therefore, we do not institute trial.10 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “10 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the petition based on the state of the related litigation. See Prelim. Resp. 2–19.” slip op. at 23

  • BurdenNot shown unpatentable

    “For these reasons, we find Petitioner’s first mapping insufficient to establish a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Rockwood and Xie.” slip op. at 20

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

    “We additionally find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile); but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in Petitioner’s proposed combination. See Pet. 17–18. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,8 whereas Xie’s system looks for similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood.” slip op. at 18

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,578,045

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