- PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution deniedPTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00926 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: the challenged claims were entitled to the ’454 application’s priority date, so the petition showed no reasonable likelihood of unpatentability.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 64–65.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
§ 112 disclosurePatents in suitUS 11,050,855 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution deniedPTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,010,330 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00728 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)). For purposes of this Decision, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’036 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties address the construction of various claim terms. Pet. 12–13; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00727 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 43–83 unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 21–22 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 22.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For at least these reasons, based on the record before us, Petitioner does not make an adequate showing, for purposes of instituting an inter partes review, that the combination of Miesterfeld, Wense, OSEK-COM, and OSEK-NM teaches or suggests all the limitations of claim 1. Claims 43, 45–52, 54–56, 58–60, 63–70, 77, and 80–82 depend from claim 1. See Pet. 45–71. Therefore, we conclude the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claims 43, 45–52, 54–56, 58–60, 63–70, 77, and 80–82 of the ’036 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness over the combination of Miesterfeld, Wense, OSEK-COM, and OSEK-NM. E. Remaining Obviousness Grounds Petitioner further challenges claims 44, 53, 57, 61, 62, and 73–76 by adding the teachings of OSEK-OS to those of the references discussed above, challenges claims 71 and 72 by adding the teachings of OSEK-OIL to those of the references discussed above, challenges claims 78 and 79 by adding the teachings of Reinold to those of the references discussed above, and challenges claim 83 by adding the teachings of OSEK-FTCom to those of the references discussed above. Pet. 69–84. Petitioner relies on OSEK-OS, OSEK-OIL, Reinold, and OSEK-FTCom only for teaching limitations of dependent claims, not for teaching the subject matter of independent claim 1, and therefore these additional references do not remedy the deficiencies addressed above with respect to claim 1. Id. Thus, for the same reasons discussed above, the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 44, 53, 57, 61, 62, 71–76, 78, 79, and 83 are unpatentable as obvious over the asserted combinations of references.” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036 - Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00726 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–42, 102–108, 121, and 126 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art at the time of the invention would have had “at least . . . a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and at least two years of industry experience in the field of distributed computing or automotive engineering, or equivalent experience, education, or both.” Pet. 10 (citing Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties address the construction of various claim terms. Pet. 10–11; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,002,036 - Huizhou TCL Mobile Communication Co. Ltd. / TCT Mobile (US) Inc et al. v. Wi-Lan IncRehearing deniedPTAB · Sep 21, 2020 · IPR2020-00302 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show that the Board misapprehended or overlooked its arguments on the Hong and Zhuang obviousness ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify 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
“Response (Paper 6), we determined that Petitioner had not shown a reasonable likelihood of prevailing on any ground presented in the Petition, and, therefore, we denied institution. Paper 8 (“Dec.”), 20.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“demonstrate that a [person of ordinary skill in the art] would have found the random access channel limitation obvious in view of the description of the initial ranging channel in Hong, based on the combined teaching of Hong and Zhuang.” Req. Reh’g 8. We also addressed Petitioner’s reasons to combine Hong and Zhuang in the Decision denying institution as follows: Petitioner’s argument is based on Zhuang’s use of terms as equivalents without sufficiently explaining how Zhuang’s disclosures apply to Hong. Petitioner asserts that a person of ordinary skill in the art “would have combined the teaching of Zhuang that random access and ranging are equivalent terms with Hong’s teaching of fast handover in order to achieve fast handover in other wireless systems based on TDMA, FDMA or CDMA.” Pet. 23 (citing Ex. 1004 ¶ 13; Ex. 1010 ¶¶ 101–106). But Petitioner does not explain how the use of equivalent terms in Zhuang creates a fast handover in Hong, and, as discussed above, Petitioner does not explain how Hong’s ranging request messages are random access signals in the sense taught in Zhuang. Dec. 11. Petitioner’s focus on the alleged interchangeability of, or equivalence between, terms is not persuasive given the differences between Hong and Zhuang, as discussed in the Decision. Dec. 10–11.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,259,688
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.