• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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) (2018). 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. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,441,752
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “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). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500
• Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.

  RulingsInstitution decision

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

    “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. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17

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

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,244,586
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2

  • BurdenDenied

    “While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13

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

    “proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,403,051
• Decurtis LLC v. Carnival CorporationInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00784 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on obviousness for any challenged claim, 1–22.

  RulingsInstitution decision

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

    “§ 103(a) A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” slip op. at 6

  • BurdenDenied

    “computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other.” slip op. at 17

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

    “locking mechanism are separate and distinct components because claim limitation 13[b] sets forth a “door lock communication module” that is “electrically connected to the electronically controlled locking mechanism of the latch assembly.” Prelim. Resp. 17–18. We begin with the language of the claim. The listing of the door lock communication module and locking mechanism as separate and distinct elements clearly implies that they are distinct components. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). Furthermore, not only are the communication module and locking mechanism recited as separate elements, the phrase “electrically connected to each other” denotes a further level of distinction between those two components. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (finding the word “other” to “denote[] a further level of distinction” between separately recited components); see also Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., 838 F. App’x 551, 553 (Fed.” slip op. at 13

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

    “computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other. Soleimani does not teach or suggest a locking mechanism and communication module that are separate, distinct, and electrically connected to each other We are persuaded by Patent Owner’s argument that Petitioner has not shown Soleimani to teach or suggest both an “electronically controlled locking mechanism” and a “door lock communication module” electrically connected thereto in the claimed configuration. Prelim. Resp. 16–17. Although Petitioner identifies the claimed locking mechanism as Soleimani’s “electronically actuated lock 216,” and the claimed door lock communication module as Soleimani’s “networked lock actuator” (Pet. 19), we are not persuaded that these elements of Soleimani teach locking mechanism and communication module that are electrically connected to each other as claimed. Petitioner points to electronically actuated lock 216 as the electronically controlled locking mechanism and to a networked lock actuator as the communication module. Pet. 17. Petitioner does not clearly specify whether the electronically controlled locking mechanism is alleged to be the entire electronically actuated lock 216 or merely the physical catch portion therein. We consider both possibilities. Should Petitioner’s contention be that the physical catch is the claimed “electronically controlled locking mechanism,” Petitioner does not allege that the catch is “electrically connected to” the door lock communication module as recited in claim limitation 13[b]. Rather, Petitioner only characterizes Soleimani’s catch as being “actuated” by the network lock actuator (Petitioner’s alleged “door lock communication module”). Pet. 61–62 (addressing claim 1). We note the Petition includes evidence that this action need not involve an electrical connection to the latch. In Petitioner’s discussion of Bliding (not applied to claim 13), Petitioner’s declarant discusses an example of a mechanical, not electrical, connection between catch and actuator. Ex. 1002 ¶ 71 (“an electric motor to actuate a catch”) (citing Ex. 1009 ¶ 21, in which “rotation of the rotatable axle . . . actuates the lock catch”). Thus, to the extent Petitioner attempts to allege the catch portion of lock 216 teaches or suggests the electronically controlled locking mechanism electrically connected to the door lock communication module, Petitioner has not explained how Soleimani’s catch is “electrically connected” in any manner, much less to the door lock communication module as claimed. Thus, a reliance solely on Soleimani’s catch as the electronically controlled locking mechanism would fail to teach the “electrically connected” limitation, and as such, would lack a reasonable likelihood of prevailing on the merits of the obviousness ground for claim 13.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,049,516
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

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

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

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

    “contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 5 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 18–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377
• Juniper Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing

  The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • 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, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  Claim constructionDiscretionary denial
  Patents in suitUS 7,647,633
• Google LLC v. Ipa Technologies Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

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

    “There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5

  • Other 314aDenied

    “request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 6,742,021
• Google LLC v. Ipa Technologies Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

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

    “trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “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). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

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

    “There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 6,523,061

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.