• Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Institution denied
  PTAB · Dec 3, 2025 · PGR2025-00056 · APJ Steven M Amundson · PGR · Institution

  Institution was denied because Petitioner did not show it was more likely than not that claims 1–20 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, and for the reasons explained below, we determine that Petitioner has failed to demonstrate that it is “more likely than not” that at least one of the claims challenged in the Petition is unpatentable. Hence, we deny the Petition and do not institute a post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 10 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 39. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 22. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’149 patent as well as the asserted references. See, e.g., Ex. 1005, 1:35–6:56, 42:44–46:28, code (57); infra §§ III.E.1–III.E.2, III.G.1–III.G.2, III.H.1.” slip op. at 25

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

    “4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post-grant review. As Petitioner recognizes, the ’149 patent defines many of the claim terms Petitioner discusses in the “Claim Interpretation” section of the Petition. See Pet. 14–16. For instance, the patent defines “antenna rectangle” as “the orthogonal projection of the antenna box along the normal to the face with largest area of the antenna box.” Ex. 1005, 14:21–24. Further, the patent defines “complexity factor F21” and “complexity factor F32” consistent with the independent claims. See id. at 17:16–21, 17:49–61, 18:8–18, 19:12–25, 20:5–17, 42:62–43:25, 44:5–30, 45:8–46:3. E. Alleged Obviousness over Dou and Ciais-Multiband: Claims 7–9, 11–14, 16, 17, 19, and 20 Petitioner contends that claims 7–9, 11–14, 16, 17, 19, and 20 are” slip op. at 28

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

    “Petitioner does not explain why an ordinarily skilled artisan who used Ciais-Quadband’s antenna for Dou’s two antennas 206 and 208 would have departed from the commonly accepted rule of thumb and Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency to the extent needed to implement the proposed combination, i.e., with only about 55% of the preferred spacing between antennas. See Pet. 60–69; Ex. 1007 ¶¶ 172–187. Hence, based on the current record, Petitioner does not establish sufficiently for purposes of institution that an ordinarily skilled artisan would have been motivated to combine Ciais-Quadband’s teachings with Dou’s teachings in the way Petitioner proposes. Further, the addition of two Nakano InvFL antennas extending from the ground plane both above and below the PCB does not remedy the insufficient spacing between “the swapped-in Ciais-Quadband antennas.” Ex. 2010 ¶ 67.” slip op. at 69

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 12,095,149
• Fortinet, Inc. v. Croga Innovations Ltd.Institution denied
  PTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,601,780
• Ubiquiti Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Mar 7, 2025 · IPR2024-01290 · APJ Russell E Cass · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed patent owner constructionDecided for patent owner

    “interview to incorporate prosecution dependent claim 2 into prosecution claim 1 and cancel prosecution dependent claim 3. See § I.F, supra. We determine that this agreement and the corresponding amendment constitutes a clear disavowal of subject matter that supports Patent Owner’s construction. Prosecution claim 2 required that the second communication frame follow the first communication frame after a SIFS (corresponding to Figure 5 of the ’122 patent), while prosecution claim 3 required that there be a SIFS and an intervening response between the first and second communication frames (corresponding to the embodiments of Figures 3 and 4 of the ’122 patent). Before the amendment, original claim 1 included both of these embodiments, but the incorporation of prosecution claim 2 into prosecution claim 1 and the cancellation of prosecution claim 3 limited issued claim 1 to only the embodiment of prosecution claim 2. Because Larsson disclosed an intervening response to the first communication frame before the second communication frame, the clear import of the amendment was to limit claim 1 to the embodiment where the second communication frame follows immediately after the SIFS in order to distinguish claim 1 from Larsson. Indeed, in the Reasons for Allowance, the examiner explained that claim 1 distinguishes over the prior art (including Larsson) because “[t]he prior art of record fails to teach or fairly suggest ‘receiv[ing] the second communication frame after a short inter frame space (SIFS) that follows the first communication frame,’” as added from prosecution claim 2. Ex. 1002, 47. If, as Petitioner argues, prosecution claim 2 was broad enough to cover the embodiment of prosecution claim 3, then the amendment would have served no apparent purpose. Thus, we agree with Patent Owner that “[t]here is no other plausible explanation for why, when faced with Larsson’s disclosure of an intervening response, the Examiner initiated an interview to incorporate the SIFS limitation of dependent claim 2 into claim 1, and cancel dependent claim 3, which, like Larsson, included an intervening response.” See Prelim. Sur-reply 1–2.” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “of the alleged invention would have had “(1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications standards and/or product development.” Pet. 26 (citing Ex. 1003 ¶¶ 25–26). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not advance a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp.; Prelim. Sur-reply. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’122 patent and the asserted prior art of record.” slip op. at 27

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

    “We agree with Patent Owner that Petitioner fails to show that Gu teaches that “the second communication frame follows after a short inter frame space (SIFS) after the first communication frame with the transmit announcement indication.” Ex. 1001, 7:64–67. As discussed above, we construe this limitation to require that “the second communication frame follows substantially immediately after the first communication frame (without any intervening response to the first communication frame),” as Patent Owner proposes. See § II.A, supra. Petitioner has not shown that Gu meets this construction because Gu includes an intervening response between the first and second communication frames. Consequently, Petitioner has failed to demonstrate a reasonable likelihood that claim 1 is unpatentable over the combination of Gu and Trainin.” slip op. at 31

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

    “review, under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4 (2024). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review on any grounds set forth in the Petition.” slip op. at 2

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,594,122
• Charter Communications, Inc. v. Iarnach Technologies, Inc.Institution denied
  PTAB · Feb 19, 2025 · IPR2024-01286 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that Petitioner’s proposal reflects an education level and experience that is too low. Prelim. Resp. 37. Therefore, Patent Owner proposes that a person of ordinary skill in the art “would have at least a bachelor’s degree in electrical engineering, computer science, or a similar degree plus at least two years of experience in optical networks.” Id. (citing Ex. 1001, 1:7–10; Ex. 2002 ¶¶ 18–24). Patent Owner further contends that “[a] higher level of experience would compensate for a lower education and vice versa.” Id. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’378 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 8

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

    “There is no dispute between the parties as to this term that would affect our Decision. Therefore, we do not need to explicitly construe it for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10

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

    “On this record, we determine that Petitioner has not sufficiently shown, for purposes of institution, that the combination of references teaches “using the common key to encrypt multicast service data of all different multicast services in a same bearer channel and then sending encrypted data,” as recited in claim 1. To teach this limitation, Petitioner relies on disclosures from RFC 4601 and RFC 11127 purporting to show that communications to a multicast group can be drawn from different sources. Pet. 28–31. As set forth above, Petitioner argues that “[d]ata from . . . different sources constitutes multicast service data of different multicast services.” Id. at 32 (citing Ex. 1003 ¶ 91). Therefore, Petitioner’s argument 7 We tend to agree with Patent Owner that Petitioner’s reliance on RFC 1112’s disclosure that “[a] host need not be a member of a group to send datagrams to it” does not seem to support that “[a]ny number of sources may direct such IP datagrams to [a] single destination address.” Prelim. Resp. 51–52; Pet. 31; Ex. 1003 ¶ 89. However, there is no dispute that RFC 4601 teaches that communications to a multicast group can be drawn from different sources. See Pet. 31; Prelim. Resp. 51. presumes that by showing that RFC 4601 and RFC 1112 teaches multicast communications from different sources, Petitioner has also shown that the multicast communications are from different multicast services. We disagree.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,942,378
• Cisco Systems, Inc. v. Croga Innovations Ltd.Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01196 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show that Delco teaches the internal firewall limitations required by independent claims 1 and 11.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9

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

    “Petitioner submits that, “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 12. Patent Owner argues that with regard to the internal firewall limitations, “Petitioner’s mappings of the asserted art to the limitations . . . rely on implicit constructions of those terms without any support in the ’780 specification.” Prelim. Resp. 2. However, Patent Owner does not propose any express claim construction. Id. No need exists to expressly construe any claim terms to resolve the parties’ dispute. 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 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “7 Patent Owner criticizes the Shenoy Declaration as related to the internal firewall limitations and argues that this testimony should be given little weight: The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 38-41 with EX1003 at ¶¶90-96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 5 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,601,780
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution denied
  PTAB · Jun 24, 2024 · IPR2024-00319 · APJ Russell E Cass · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of success on either obviousness ground.

  RulingsInstitution decision

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

    “that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not established a reasonable likelihood that any of the challenged claims are unpatentable. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Almeroth, Petitioner argues that one of ordinary skill “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field.” Pet. 6 (citing Ex. 1005 ¶ 41). Petitioner further states that “[r]elevant work experience would include experience with cellular telecommunications and networking, radioaccess network architectures, protocols, and signal propagation in wireless networks,” and that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not set forth a proposed level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and not disputed by Patent Owner as reasonable and consistent with the prior art. 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

  • BurdenNot shown unpatentable

    “Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20

  Claim constructionDiscretionary denialcites KSR
  Patents in suitUS 8,891,347
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00316 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 10–13, 15, and 17 were obvious over Gaal or Gaal and Khoryaev.

  RulingsInstitution decision

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

    “c) Analysis Based on the present record, we agree with Patent Owner that Gaal does not teach or suggest the claim 10.3 and 10.4 requirements: determine, based on the quality status of the first frequency spectrum resource, that the first frequency spectrum resource is a sub-optimal resource, for the uplink channel and the downlink channel, relative to other frequency spectrum resources that are available for use by the wireless base station; and in response to the determination that the first frequency spectrum resource is the sub-optimal resource, assign the first frequency spectrum resource to a shared resource pool. Ex. 1001, 18:64–19:6. Petitioner asserts that flexible subframes are sub-optimal because they can be more prone to interference than fixed subframes. Pet. 35 (citing Ex. 1004 ¶ 76; Proctor Decl. ¶ 165). But this simply is the result of the fact that a subframe in one base station cell can be handling uplink while a corresponding subframe in an adjacent base station cell is handling downlink. Proctor Decl. ¶¶ 166–168. There is nothing in Gaal to indicate that a subframe is designated as flexible, or created to be flexible, as the result of any measurement of quality status. Indeed, as the Petition admits, “Gaal does not specifically provide any criteria for designating a subframe as flexible.” Pet. 63. As discussed above in Section III.D.1, for Release 12 of the LTE standard, an eIMTA feature provides for an embellishment of the seven predefined TDD configurations, in which each configuration assigns certain subframes as fixed and others as flexible. Nor is there any concept in Gaal of a “shared resource pool” to which a flexible subframe is assigned in response to being determined as sub-optimal. Petitioner characterizes the flexible subframes as being assigned to a shared resource pool because they can be allocated to either uplink or downlink. Pet. 38. But this is an inherent property of a flexible subframe — Petitioner does not establish that the flexible subframe is assigned to a shared resource pool or anything else in response to a determination that it is sub-optimal. In addition, as Patent Owner argues, nothing in Gaal teaches determining, based on quality status, that a flexible subframe is sub-optimal for both uplink and downlink. The only quality status measurements disclosed in Gaal are CSI measurements, which relate to downlink but which are useless for uplink. Ex. 1001, 9:8–12; Ex. 1004 ¶ 85. Accordingly, for the reasons set forth above, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claim 10 would have been obvious over Gaal.” slip op. at 19

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

    “determine, based on the quality status of the first frequency spectrum resource, that the first frequency spectrum resource is a sub-optimal resource, for the uplink channel and the downlink channel, relative to other frequency spectrum resources that are available for use by the wireless base station; and in response to the determination that the first frequency spectrum resource is the sub-optimal resource, assign the first frequency spectrum resource to a shared resource pool. Ex. 1001, 18:64–19:6. Petitioner asserts that flexible subframes are sub-optimal because they can be more prone to interference than fixed subframes. Pet. 35 (citing Ex. 1004 ¶ 76; Proctor Decl. ¶ 165). But this simply is the result of the fact that a subframe in one base station cell can be handling uplink while a corresponding subframe in an adjacent base station cell is handling downlink. Proctor Decl. ¶¶ 166–168. There is nothing in Gaal to indicate that a subframe is designated as flexible, or created to be flexible, as the result of any measurement of quality status. Indeed, as the Petition admits, “Gaal does not specifically provide any criteria for designating a subframe as flexible.” Pet. 63. As discussed above in Section III.D.1, for Release 12 of the LTE standard, an eIMTA feature provides for an embellishment of the seven predefined TDD configurations, in which each configuration assigns certain subframes as fixed and others as flexible. Nor is there any concept in Gaal of a “shared resource pool” to which a flexible subframe is assigned in response to being determined as sub-optimal. Petitioner characterizes the flexible subframes as being assigned to a shared resource pool because they can be allocated to either uplink or downlink. Pet. 38. But this is an inherent property of a flexible subframe — Petitioner does not establish that the flexible subframe is assigned to a shared resource pool or anything else in response to a determination that it is sub-optimal. In addition, as Patent Owner argues, nothing in Gaal teaches determining, based on quality status, that a flexible subframe is sub-optimal for both uplink and downlink. The only quality status measurements disclosed in Gaal are CSI measurements, which relate to downlink but which are useless for uplink. Ex. 1001, 9:8–12; Ex. 1004 ¶ 85. Accordingly, for the reasons set forth above, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claim 10 would have been obvious over Gaal.” slip op. at 19

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

    “IV. DISCRETIONARY DENIAL OF INSTITUTION Patent Owner argues that we should exercise our discretion to deny institution “in light of parallel district court litigation involving the same patent, the same parties, the same claims, and the Petition’s lead reference.” Prelim. Resp. 2. However, because we are denying institution on the merits, it is unnecessary to determine whether it is appropriate to exercise our discretion to deny institution based on the parallel litigation.8” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 3–4 (citing Proctor Decl. ¶ 42). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner does not challenge that definition.” Prelim. Resp. 9. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,368,361
• Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution denied
  PTAB · May 22, 2024 · IPR2024-00003 · APJ Russell E Cass · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–18 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “Based on the present record, we determine that Petitioner has failed to make a sufficient showing as to limitation [1.3] for purposes of institution. As Patent Owner notes, limitation [1.3] requires that “the network message server” is configured to receive multiple requests to transmit application data “indicating a corresponding one of the mobile end-user devices and one of a plurality of applications” from “each of a plurality of network application servers.” Ex. 1001, 163:57–62. Petitioner maps the claimed “network message server” to Houghton’s push server 8015, and the “plurality of network application servers” to application server 7026. Pet. 17, 20. Petitioner also maps the claimed “multiple requests to transmit application data” from the network application servers to Houghton’s “trigger event” that triggers “application server 702 to push an application command message to the push client 704”7 (the “device messaging agent”). Id. at 13, 21. According to Petitioner, these “command messages” initiate “a mobile terminal client trigger event in a mobile application 705” running on a mobile terminal. Id. at 21. 5 As noted above, Petitioner explains that “Houghton also refers to push servers as components 202, 301, 401, 501, 701, and 901.” Pet. 17 n.5. 6 Petitioner notes that “Houghton also refers to application servers as components 502, 802, and 902.” Pet. 20 n.6. 7 As noted above, Petitioner states that “Houghton also refers to push clients at components 704, 804, 904, and 906.” Pet. 13 n.4. Petitioner, however, does not sufficiently explain how Houghton teaches that the “network message server” (push server 701 or 801) is configured to receive requests from “each of a plurality of network application servers” (application servers 702 and 802) to transmit application data “indicating a corresponding one of the mobile end-user devices and one of a plurality of applications,” as limitation [1.3] requires. Relying on Column 21, line 35 through Column 22, line 18, Petitioner argues that “Houghton discloses a ‘COMMAND PUSH’ . . . process in which an ‘application server 702’ pushes an ‘application command message’ to a push client executing on a mobile terminal.” Pet. 20–21 (emphasis added). The cited portion of Houghton, however, does not state that application server 702 pushes a command message to the push client, but rather states that push server 701 carries out this step. As Houghton explains: Figure 7 illustrates an example of an ‘COMMAND PUSH’ procedure wherein the push server 701 is triggered by a trigger event as for example from an application server 702 to push an application command message to the push client 704 and thereby initiate a mobile terminal client trigger event in a mobile application 705 from a plurality of such applications, program modules, and user interface features on the terminal 705. Ex. 1005, 21:35–22:4 (emphasis added). As this passage from Houghton explains, it is push server 701, not application server 702, that sends the command message to push client 704. Application server 702 merely triggers push server 701 to send the command message.” slip op. at 17

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

    “Based on the present record, we determine that Petitioner has failed to make a sufficient showing as to limitation [1.3] for purposes of institution. As Patent Owner notes, limitation [1.3] requires that “the network message server” is configured to receive multiple requests to transmit application data “indicating a corresponding one of the mobile end-user devices and one of a plurality of applications” from “each of a plurality of network application servers.” Ex. 1001, 163:57–62. Petitioner maps the claimed “network message server” to Houghton’s push server 8015, and the “plurality of network application servers” to application server 7026. Pet. 17, 20. Petitioner also maps the claimed “multiple requests to transmit application data” from the network application servers to Houghton’s “trigger event” that triggers “application server 702 to push an application command message to the push client 704”7 (the “device messaging agent”). Id. at 13, 21. According to Petitioner, these “command messages” initiate “a mobile terminal client trigger event in a mobile application 705” running on a mobile terminal. Id. at 21. 5 As noted above, Petitioner explains that “Houghton also refers to push servers as components 202, 301, 401, 501, 701, and 901.” Pet. 17 n.5. 6 Petitioner notes that “Houghton also refers to application servers as components 502, 802, and 902.” Pet. 20 n.6. 7 As noted above, Petitioner states that “Houghton also refers to push clients at components 704, 804, 904, and 906.” Pet. 13 n.4. Petitioner, however, does not sufficiently explain how Houghton teaches that the “network message server” (push server 701 or 801) is configured to receive requests from “each of a plurality of network application servers” (application servers 702 and 802) to transmit application data “indicating a corresponding one of the mobile end-user devices and one of a plurality of applications,” as limitation [1.3] requires. Relying on Column 21, line 35 through Column 22, line 18, Petitioner argues that “Houghton discloses a ‘COMMAND PUSH’ . . . process in which an ‘application server 702’ pushes an ‘application command message’ to a push client executing on a mobile terminal.” Pet. 20–21 (emphasis added). The cited portion of Houghton, however, does not state that application server 702 pushes a command message to the push client, but rather states that push server 701 carries out this step. As Houghton explains: Figure 7 illustrates an example of an ‘COMMAND PUSH’ procedure wherein the push server 701 is triggered by a trigger event as for example from an application server 702 to push an application command message to the push client 704 and thereby initiate a mobile terminal client trigger event in a mobile application 705 from a plurality of such applications, program modules, and user interface features on the terminal 705. Ex. 1005, 21:35–22:4 (emphasis added). As this passage from Houghton explains, it is push server 701, not application server 702, that sends the command message to push client 704. Application server 702 merely triggers push server 701 to send the command message.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Pet. 20–23. Moreover, Dr. Traynor’s declaration does not help Petitioner because Dr. Traynor merely repeats the Petition’s assertions with respect to limitation [1.3], without providing additional detail or explanation. Ex. 1003 ¶¶ 46–48; 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 20

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

    “We further note that neither Petitioner nor Dr. Traynor provides a claim construction for the term “secure interprocess communication service.” Pet. 2–3, 27–31, 83–85; Ex. 1003 ¶¶ 23, 52–54, 134–137. The plain meaning of this term would appear to cover a secure service that communicates between processes. Neither Petitioner nor Dr. Traynor suggests that the term would have a different meaning, or explains how Ellison’s secure platform for protecting applications against unauthorized modification would provide a secure service for communicating between processes. Finally, we note that Dr. Traynor’s quotation of a portion of the ’117 patent specification discussing an “interprocess software communication bus” does not cure the deficiencies in Petitioner’s position. See Ex. 1003 ¶ 135 (citing Ex. 1001, 42:45–67, 43:1–4). To begin with, the Petition does not rely on this portion of the ’117 patent in discussing the “secure interprocess communication service” limitation. Pet. 83–85. And, neither the Petition nor Dr. Traynor contends that the claim term “secure interprocess communication service” should be construed to be (or to cover) an “interprocess software communication bus.” Id. at 2–3, 27–31, 83–85; Ex. 1003 ¶ 135. Moreover, even if the term “secure interprocess communication service” were construed to cover an “interprocess software communication bus,” neither Petitioner nor Dr. Traynor points to an “interprocess software communication bus” in Ellison. Pet. 2–3, 83–85; Ex. 1003 ¶¶ 134–137.” slip op. at 39

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,198,117
• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7

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

    “Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. 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 Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other

    “The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 7,020,667
• Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution denied
  PTAB · Mar 29, 2024 · IPR2023-01462 · APJ Russell E Cass · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–26 were unpatentable, finding the asserted combinations did not teach blocking an Internet service access request.

  RulingsInstitution decision

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

    “that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 15– 17). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Kevin Butler. Ex. 1003 ¶¶ 15–17. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s description, which is consistent with the ’445 patent and the asserted prior art.” slip op. at 6

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

    “B. Claim Construction A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 4. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6

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

    “that its system can “classify[] and/or control[] network access requests (e.g., IP address requests).” Ex. 1001, 11:27–32 (emphasis added). In particular, the ’455 patent describes an example where “before a connection is allowed to be opened . . . it is blocked and a message is sent back to the application . . . that the network access attempt was not allowed/blocked.” Id. at 91:41– 49 (emphasis added). In contrast, the ’455 patent explains that its system also can “classify[] and/or control[] . . . network capacity/resources usage (e.g., bandwidth usage).” Id. at 11:27–32. For example, a “socket can be allowed to open but after some point in time (e.g., based on network service usage . . . ), the stream is blocked or the socket is terminated.” Id. at 91:49– 54. In other words, the ’455 patent distinguishes between 1) blocking an Internet service access request before a connection is open; and 2) blocking a network stream after a connection is open. Id. at 11:27–32, 91:41–54.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 9,277,445

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.