- Lenovo (United States) Inc. / Motorola Mobility LLC v. Collision Communications, Inc.Institution deniedPTAB · Apr 11, 2025 · IPR2025-00285 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the same claims, grounds, arguments, and evidence had already failed the reasonable-likelihood threshold in the Samsung IPR, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“35 U.S.C. § 315(c), which states as follows: JOINDER.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Because joinder under 35 U.S.C. § 315(c) is premised on an inter partes review having been instituted, and the Board did not institute review in the Samsung IPR to which Petitioner seeks to join, we deny the Motion for Joinder.” slip op. at 3
NonePatents in suitUS 6,947,505 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that 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
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Institution deniedPTAB · May 20, 2024 · IPR2024-00157 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, and all supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art as of the filing date of the application for the ’988 patent “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. To the extent necessary for purposes of this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it appears consistent with the prior art before us in this proceeding.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“this limitation. Nonetheless, we find a close question as to whether Petitioner has made a sufficient showing with respect to this limitation, as the only evidence Petitioner cites in support of its argument that “[t]he term GND is often used interchangeably with the term VSS, which refers to negative voltage” (Pet. 8) is an identical, unsupported assertion in Dr. Schubert’s Declaration (Ex. 1003 ¶ 38) to which we accord little or no weight. See 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.”). Because we determine below that Petitioner has not made a sufficient showing with regard to limitations 1[E] and 1[H] (see infra” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Having considered the parties’ respective arguments and the evidence of record, we agree with Patent Owner that Petitioner has failed to make a sufficient showing with respect to limitations 1[E] and 1[H]. As Patent Owner points out, the Petition effectively concedes that there is a structural difference between pins, as disclosed by Lai, and pads, as recited in claim 1, and Petitioner does not reconcile this difference or explain why a person of ordinary skill in the art would have been motivated to modify Lai’s disclosure and use pads rather than the pins Lai discloses. Prelim. Resp. 31. Even if pins and pads may both be types of terminals, claim 1 specifically recites pads, not terminals, and Petitioner has not persuasively shown that a person of ordinary skill in the art would regard pins and pads as interchangeable or that pads would otherwise be suggested by Lai’s disclosure of pins. Further, as Patent Owner also points out, Petitioner’s inclusion of “general knowledge of a POSITA” in the asserted ground is unavailing knowledge” is to be brought to bear on the combination and has instead “left it to Patent Owner and the Board to speculate on which of the features of the asserted art differs from the claims and how the asserted art or its teaching would have been modified.” Prelim. Resp. 13–14. Although general knowledge of a person of ordinary skill in the art may, under certain circumstances, be relied upon to supply a missing claim limitation (see, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)), such reliance is improper where, as here, it is based merely upon “conclusory statements and unspecific expert testimony” (id. (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016))).” slip op. at 19
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,124,988 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Mar 12, 2020 · IPR2019-01558 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Microsoft had not shown a reasonable likelihood of proving claims 1, 2, 9, 36, or 37 unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. Therefore, we deny the Petition for an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“5 Citing the testimony of Dr. Lavian, Petitioner asserts that a person of ordinary skill in the art for purposes of the ’622 patent “would have possessed at least a bachelor’s degree in computer science, computer engineering, or electrical engineering” with “at least two years of experience in the development and operation of network communication systems (or equivalent degree or experience).” Pet. 9 (citing Ex. 1003 ¶ 18). Patent Owner argues that “Petitioner’s proposed level of ordinary skill in the art is improper because it lacks an upper bound in both the factor of educational achievement and the factor of work experience,” but notwithstanding those defects, “Patent Owner does not provide its own definition because, even applying the definitions proposed in the Petition, Petitioner has not met its burden.” Prelim. Resp. 11-12. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s assessment. 6 Patent Owner does not contend in its Preliminary Response that any such secondary considerations are present.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“(Ex. 1004, 23:18–20), we find no teaching or suggestion in the combination of Zydney and Shinder of the server assigning “an IP address” to the software agent (or to a device running the software agent). We also find no persuasive support for Petitioner’s contrary conclusions in Dr. Lavian’s testimony, which merely repeats the arguments in the Petition and cites the same portions of Zydney and Shinder. Compare Ex. 1003 ¶¶ 249–253 (citing, e.g., Ex. 1004, 15:1–2, 15:13–14, 16:7–10, 23:11–12, 23:18–21; Ex. 1005, 78, 86–88, Fig. 8-3), with Pet. 42–45 (same).8” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“juncture, we determine, for substantially the reasons articulated by Patent Owner, that Petitioner has not demonstrated a reasonable likelihood of prevailing in its contention that claim 1 is unpatentable over Zydney, Shinder, and Kirkwood. As Patent Owner points out (Prelim. Resp. 35–36), Zydney discloses storing user names and passwords only at a central server (Ex. 1004, 23:14-24:6) and storing lists of users only on originator devices (id. at 14:17–19, 34:1–3). Petitioner’s arguments do not persuade us that a person of ordinary skill in the art would have been motivated to modify Zydney to store all three of a user name, a password, and a list of other users in “each” of the user records of “a” user database, as recited in claim 1, whether that database would reside at a central server or at originators’ devices. Moreover, neither Petitioner nor Dr. Lavian—whose testimony in this regard merely repeats the argument in the Petition nearly verbatim— sufficiently explains what purported “advantages” a person of ordinary skill in the art would have appreciated would come from making such a combination. See Pet. 63. Petitioner does not explain, on the one hand, how Zydney’s registration and authentication would function if user names and passwords were stored in databases at originator devices rather than at a central server or, on the other hand, how Zydney’s peer-to-peer communications would function if buddy lists were stored with user names and passwords in a database at a central server rather than at originator devices. We, accordingly, are not persuaded by Petitioner’s contention that the suggested modifications “would have been nothing more than a simple combination of known and commonly used technologies . . . by known methods without changing their respective functions.” See Pet. 63.” slip op. at 26
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,724,622 - Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing deniedPTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6
Claim construction§ 103 obviousness - Unified Patents Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Aug 16, 2019 · IPR2019-00480 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving institution denied because Petitioner did not show a persuasive reason to combine Boykin with the other asserted references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because Petitioner’s arguments concerning Boykin1 were not persuasive and that a person of ordinary skill in the art would not have had reason to combine Boykin’s teachings with the other asserted references. Dec. on Inst. 14−21. Petitioner has filed a Request for Rehearing. Paper 9 (“Req. Reh’g”). Petitioner argues several points, but in particular, Petitioner argues that our Decision misapprehended Boykin in concluding that the Petition failed to show an adequate reason to combine. Id. at 9. According to Petitioner, Boykin supports the contention Petitioner presented in the Petition that Boykin triggers the incentive of awarding users with points or credits, which a person of ordinary skill in the art would find beneficial. Id. Petitioner then points to Dr. Vijay Madisetti’s testimony of the alleged benefit. Id. (citing Ex. 1004 ¶ 116). Petitioner faults our Decision for weighing Patent Owner’s arguments, which Petitioner criticizes as constituting attorney argument, and concludes that our Decision’s reasoning misapprehends that Boykin would provide a benefit despite our determination that a person of ordinary skill in the art would not derive the alleged benefit given the teachings of the other asserted references.” slip op. at 2
- BurdenNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,606,856 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 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.”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 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.”).” slip op. at 9
NonePatents in suitUS 8,239,852 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,724,622 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,995,433 - Askeladden L.L.C. v. Encoditech, LLCRehearing deniedPTAB · Jul 31, 2017 · IPR2017-00452 · APJ Gregg I Anderson · IPR · Rehearing
The Board denied Askeladden’s rehearing request and left in place the denial of IPR for claims 1–8 because the request showed no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The Request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we concluded Petitioner did not show sufficiently that Chieu taught the “direct limitation,” i.e., a “first mobile station” transmitting a signal “directly to the second mobile station,” as required by claims 1–7 of the ’095 patent. Dec. 16–19 (citing Ex. 1001, col. 21, ll. 34–39 (claim 1); Ex. 1001, col. 23, ll. 8–16 (claim 7)). We also concluded that Petitioner did not point to any teaching in Ford that expressly shows a “first communications device” or a “second communications device” as required by the preamble to independent claim 8. Id. at 19–21. Accordingly, the Petition was denied as to all challenged claims. Id. at 21.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“the ’095 patent, the Examiner found that Chieu disclosed these same [direct] limitations.” Req. Reh’g 4 (citing Pet. at 20 (citing Ex. 1004, 124–125)). Neither page 20 nor any other portion of the Petition argues the prosecution history as a basis for unpatentability. To the extent the prosecution history is a new argument, a request for rehearing is not an opportunity to make new arguments. Accordingly, we are not persuaded to change the Decision based on this assertion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In essence, Petitioner proposes that Chieu be modified to omit the base station, thus meeting the direct limitation. However, “a proposed modification [is] inappropriate for an obviousness inquiry when the modification [would] render[] the prior art reference inoperable for its intended purpose.” In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)). As discussed in section II.A.2. above, both the method and apparatus claims of Chieu require a base station. Chieu requires a base station in order to implement the methods and apparatus claimed and ignoring the base station would be counter to the invention described and claimed in Chieu. The invention would be “inoperable” in that nowhere in Chieu is there any suggestion that the base station could be omitted while still achieving the objects of the invention.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,321,095
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.