- AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - Alertus Technologies, LLC v. Desktop Alert, Inc.Institution deniedPTAB · Jun 28, 2024 · IPR2024-00363 · APJ Andrew L Nalven · 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
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although claims 1 and 10 recite slightly different language, both clearly recite a “first triggering step” that precedes two subsequent polling steps. In the case of claim 1, the “first triggering step” precedes the “second step” and “fifth step.” See id. The explicit use of “second” and “fifth” supports limiting the steps to the recited order. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (cleaned up)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have (i) a bachelor’s degree or equivalent in electrical engineering, computer engineering, network engineering, computer science, and/or a related field and (ii) 1-3 years of experience relating to computer and networking systems and/or methods including systems and methods for messaging.” Pet. 4–5 (citing Ex. 1003 ¶¶ 25–26). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“with Patent Owner that Dillon discloses time-stamps as “alternatives.” Prelim. Resp. 21 (citing Ex. 1005, 4:36–41). Dillon explains that “[t]he time-stamp . . . may represent the status of the subscriber’s e-mail account in various ways . . . [m]ost commonly, it is an indication of an actual time.” Ex. 1005, 7:19–21. However, Dillon explicitly states that “[a]lternatively, a time-stamp may be a number, such as a version number . . . or it may be a binary indication of whether or not e-mail . . . has been received.” Id. at 7:23–28 (emphasis added). Petitioner has not identified any portion of Dillon that suggests using more than one type of time-stamp in the same process. See generally Pet. 30–36. Dillon’s lack of disclosure of using multiple time-stamps appears consistent with Dillon’s description of the time-stamp as providing “the status of the subscriber’s e-mail account.” Ex. 1005, 7:19–21. Each disclosed alternative — time, version number, or binary indication — provides status information for the same purpose, namely, to indicate “whether or not e-mail for the given e-mail alert service subscriber has been received by the e-mail server 12 at any given time.” Id. at 7:27–29, 9:7–17. Because each of Dillon’s alternatives for a time-stamp serves the same purpose, we are not persuaded that Petitioner has provided sufficient reasoning to demonstrate that a POSITA would have been motivated to modify Dillon to both add a new polling step requesting a first time-stamp as a Boolean time-stamp and then request a second time-stamp as a version number or time indication. Indeed, Petitioner’s asserted rationale to modify Dillon here is conclusory and fails to explain sufficiently how using a second time-stamp will achieve the asserted benefits of reducing messaging bandwidth or uniquely identifying a particular message. See Pet. 31. Because Dr. Mangione-Smith’s declaration testimony mirrors Petitioner’s argument, his supporting testimony is similarly insufficient. Compare Pet. 31, with Ex. 1003 ¶ 62. 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.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,172,765 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Apr 25, 2024 · IPR2024-00147 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“to either: (1) “a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media,” or (2) “a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 8 (citing Ex. 1003 ¶ 42). At this stage, Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’156 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner fails to provide a sufficient basis for that contention. See Pet. 20– 21; PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”). Moreover, Petitioner does not contend that Ogdon suggests (or renders obvious) element 1[A][3]. See Pet. 19–21. Further, even if the Petition could be read as including such a contention, we would preliminarily find, on this record, that Ogdon does not suggest storing multiple copies of the same video encoded at different bitrates, and that Petitioner fails to provide any rationale to support a theory that element 1[A][3] would have been obvious over Ogdon alone.11 In other words, even if an ordinarily skilled artisan could have modified Ogdon to store multiple copies of the same video encoded at different bitrates, Petitioner does not provide any rationale to support a contention that an ordinary artisan would have been motivated to implement Ogdon in this 11 The Board instituted inter partes review in other proceedings in which Petitioner contends that claim limitations including some of the same subject matter are taught or suggested by a combination of Ogdon and WO 02/075482 A2 (Allen). E.g., IPR2024-00044, Paper 1 at 21–24. There is no tension between this Decision and those other decisions because Petitioner’s contentions in those other proceedings are based on materially different arguments and evidence. manner. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we determine that Petitioner fails to show a reasonable likelihood that it will prevail on its contention that Ogdon discloses “the video server stores multiple different copies of the video encoded at different bit rates as multiple sets of streamlets,” as required by claim 1. Ex. 1001, 13:58–61 (element 1[A][3]). Consequently, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Ogdon.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,757,156 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Apr 16, 2024 · IPR2024-00048 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–8, and 10–21 were obvious over either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to either: (1) “a B.S. degree in computer science or electrical engineering streaming media,” or (2) “a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 51). At this stage, Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’772 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions, but acknowledges that the claims have been construed in the ITC Investigation. Pet. 12–13. At this stage, “Patent Owner does not propose that the Board construe any claims.” Prelim. Resp. 2. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“video (id. at Abs., 2:30–61, 13:47–49, 24:55), and one passage specifically states that one presentation includes “video” while another includes “graphic slides” (id. at 2:61–66). Ogdon references “full animation” and “limited or no animation” (as an example of a “better presentation quality” element that may be retrieved when there is sufficient time to retrieve the data) (id. at 22:44–47), but it fails to disclose that these “animations” are different copies of the same video. Finally, one of Ogdon’s claims recites “a first video portion” and “a different second video portion that corresponds in content with said first video portion,” where the “first and second video portions have substantially different expected data transmission rates.” Id. at claim 9 (emphasis added). However, Petitioner does not sufficiently show that an ordinarily skilled artisan would have understood this (i.e., two videos with corresponding content) to teach two copies of the same video encoded at different bitrates. Dr. Houh’s testimony on this point is conclusory, and thus, we give it little weight. See Ex. 1003 ¶ 65; 37 C.F.R. § 42.65(a); cf. Ex. 2001 ¶¶ 61 n.9, 70–72 (Patent Owner’s expert, Dr. Jeffay, reaching contrary conclusion given other disclosures in Ogdon). To the extent Petitioner seeks to rely on an inherent disclosure, Petitioner fails to provide a sufficient basis for that contention. See Pet. 21– 22; PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”). Moreover, Petitioner does not contend that Ogdon suggests (or renders obvious) element 1[A][2]. See Pet. 20–22. Further, even if the Petition could be read as including such a contention, we would preliminarily find, on this record, that Ogdon does not suggest storing multiple copies of the same video encoded at different bitrates, and that element 1[A][2] would have been obvious over Ogdon alone.10 In other words, even if an ordinarily skilled artisan could have modified Ogdon to store multiple copies of the same video encoded at different bitrates, Petitioner does not provide any rationale to support a contention that an ordinary artisan would have been motivated to implement Ogdon in this manner. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,868,772 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Apr 16, 2024 · IPR2024-00047 · APJ Juliet Mitchell Dirba · IPR · Institution
Institution was denied for claims 1–8, 10, and 12–16 because neither the Ogdon ground nor the Ogdon–Shteyn–Chou ground showed a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to either: (1) “a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media,” or (2) “a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 8 (citing Ex. 1003 ¶ 42). At this stage, Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’564 patent and the asserted prior art.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“video (id. at Abs., 2:30–61, 13:47–49, 24:55), and one passage specifically states that one presentation includes “video” while another includes “graphic slides” (id. at 2:61–66). Ogdon references “full animation” and “limited or no animation” (as an example of a “better presentation quality” element that may be retrieved when there is sufficient time to retrieve the data) (id. at 22:44–47), but it fails to disclose that these “animations” are different copies of the same video. Finally, one of Ogdon’s claims recites “a first video portion” and “a different second video portion that corresponds in content with said first video portion,” where the “first and second video portions have substantially different expected data transmission rates.” Id. at claim 9 (emphasis added). However, Petitioner does not sufficiently show that an ordinarily skilled artisan would have understood this (i.e., two videos with corresponding content) to teach two copies of the same video encoded at different bitrates. Dr. Houh’s testimony on this point is conclusory, and thus, we give it little weight. See Ex. 1003 ¶ 65; 37 C.F.R. § 42.65(a); cf. Ex. 2001 ¶¶ 61 n.9, 70–72 (Patent Owner’s expert, Dr. Jeffay, reaching contrary conclusion given other disclosures in Ogdon).” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“However, Ogdon never describes two copies of the same video presentation. It also does not refer to creating two copies of identical content (video or otherwise) that are encoded differently. As a result, although we preliminarily agree that Ogdon’s presentation teaches the claimed “video”,9 we do not agree that Ogdon teaches storing multiple copies of the same video, as required by element 1[A][3].” slip op. at 18
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,407,564 - Current Lighting Solutions, LLC D/B/A GE Current v. Jiaxing Super Lighting Electric Appliance Co., Ltd.Institution deniedPTAB · Aug 16, 2023 · IPR2023-00269 · APJ Neil T Powell · IPR · Institution
The Board denied institution on all challenged claims because the Li and Ono combinations did not establish a reasonable likelihood of showing the claimed component placement obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, weighing the parties’ arguments and evidence, we find Petitioner has not persuasively addressed limitation 1[h]’s requirement for a “resistor which is positioned closest to the end wall” or limitation 30[h]’s requirement for a “capacitor which is positioned closest to the end wall.” b) Conclusion for Ground 1 Because Petitioner does not provide sufficiently persuasive arguments and evidence addressing limitations 1[h] and 30[h], we find Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of independent claims 1 and 30. Additionally, Petitioner’s arguments and evidence addressing dependent claims 2, 4–6, 31, 37, 88, and 90 do not cure the deficiencies in Petitioner’s challenge to independent claims 1 and 30. Pet. 36–43, 47–48. Accordingly, Petitioner also fails to demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 4–6, 31, 37, 88, and 90.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as 1-2 years of academic or industry experience in LED lighting design.” Pet. 6 (citing Ex. 1003 ¶ 21). Petitioner also asserts that an ordinary artisan would have had “knowledge of LEDs and related technology for driving LEDs” and “would have been familiar with the field of technology” related to fluorescent lamps, their pre-heat process, increasing popularity of LED lamps, a need for heat dissipation and management in LED lamps, and end-cap openings used to lessen internal heat or pressure. Id. (citing id. at 6–11; Ex. 1002 ¶ 21). At this stage, Patent Owner does not address the level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’989 patent. See also Ex. 1003 ¶ 21.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“asserting that it would have been obvious in view of Li and Ono to locate varistor R1 or capacitor C1 closest to an end wall. Petitioner argues that a person of ordinary skill in the art would have understood heat-dissipation benefits of locating a resistor or capacitor closest to an end wall. Pet. 36, 47. In support of this, Petitioner relies on Dr. Ackley, who testifies as follows: a [person of ordinary skill in the art] would have understood that resistors are heat generating circuit elements. Therefore, it would have been obvious for a [person of ordinary skill in the art] to place the resistor closest to the end cap such that heat would be efficiently dissipated through heat dissipating functions in the end caps, such as ventilating holes. This placement would cool the resistor as well as minimize the effects of the resistor heating up other components on the PCB and improve the lifespan of the LED lamp. As an alternative to, or in addition to ventilation holes, the PCB could be placed in direct contact with the end cap. A [person of ordinary skill in the art] would have understood that heat is transferred to the end cap through this direct connection and would have been conducted out of the LED lamp to the outside environment directly through the end wall or through the conducting pins. Thus, it would have been obvious to a [person of ordinary skill in the art] to locate the (heat generating) resistor closest to the end cap. Ex. 1003 ¶ 100; see also id. ¶ 122 (similar testimony addressing placing capacitor closest to end wall). Patent Owner suggests that this testimony stems from improper hindsight based on the ’989 patent’s disclosure of heat-dissipation benefits of the claimed component locations. Prelim. Resp. 33–34. We determine that Petitioner’s rationale is insufficiently supported. Dr. Ackley provides no supporting evidence to corroborate his opinion. See Ex. 1003 ¶¶ 100, 122. And, as noted above, the ’989 patent describes LED tube lamp embodiments with a capacitor or resistor closest to an opening in the end wall, explaining that “the closest element will have better heat dissipation effect and this makes the LED tube lamp operate normally.” Id. at 3:55–57, 4:19–40. As a result, we are concerned that Petitioner’s rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)). Accordingly, we do not find Dr. Ackley’s testimony to be sufficient to support Petitioner’s contention that a person of ordinary skill in the art would have recognized the heat-dissipation advantages of Patent Owner’s claimed arrangement.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“sufficiently its arguments about the locations of Li’s varistor R1 and capacitor C1 relative to an end wall. Petitioner and Dr. Ackley assume certain spatial relationships based on Li’s Figure 6 and related disclosures. Pet. 34–35, 45–46; Ex. 1003 ¶¶ 98, 120. But, consistent with Patent Owner’s argument, Li’s Figure 6 is a “schematic circuit diagram,” not a representation of lamp components’ spatial arrangement. Ex. 1005 ¶ 41; Prelim. Resp. 30–31. In addition to Figure 6, Petitioner and Dr. Ackley cite Li’s disclosure that “the filter capacitor C1 and the varistor R1 are connected in parallel between the AC input terminals B3 and B4 of the full-bridge rectifier BR1, wherein the varistor R1 holds the input voltage of the full-bridge rectifier BR1 at a predetermined level by suppressing abnormal overvoltage in the circuit.” Ex. 1005 ¶ 115; Pet. 34–35, 45; Ex. 1003 ¶¶ 98, 120. Like Figure 6, this discloses the components’ electrical relationships. Li’s disclosure of certain electrical relationships does not specify any particular spatial relationships of varistor R1 and capacitor C1 to an end wall. And neither Petitioner nor Dr. Ackley explains why a person of ordinary skill in art would have read the disclosed electrical relationships as teaching component locations to arrive at the particular spatial arrangement required by the claim.” slip op. at 22
§ 103 obviousnesscites PhillipsPatents in suitUS 10,560,989 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · May 31, 2023 · IPR2022-01566 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over grounds relying on Tuan, which was not shown to be a printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Id. ¶ 11; see id. at pp. 22–30 (Appendix TUAN01). Ms. Munford does not otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan “was made available to the public” (id. ¶ 11) is insufficient. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“identify, with particularity, evidence sufficient to establish a reasonable likelihood that Tuan was publicly accessible before the critical date. See Hulu, IPR2018-01039, Paper 29 at 13. As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a printed publication. See id. Each of the grounds presented in the Petition relies on a combination of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not shown a reasonable likelihood that it will prevail with respect to its assertions that claims 1–8 would have been unpatentable over the proposed combinations of Kupferschmidt and Tuan. As a consequence, we do not institute an inter partes review.” slip op. at 16
§ 102 anticipationcites KSR · GrahamPatents in suitUS 11,036,556 - Truist Bank v. United Services Automobile AssociationInstitution deniedPTAB · May 16, 2023 · IPR2023-00144 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Oakes supports the claimed mobile device, is not prior art, and the petition therefore did not meet the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314(a) (2018); 37 C.F.R. § 42.4(a) (“The Board institutes trial on behalf of the Director”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Prelim. Resp. 24–26. We determine that this argument and evidence is more persuasive and better supported than Petitioner’s contrary arguments and evidence. We determine that Patent Owner’s position that a skilled artisan in the relevant time frame would have found clear support for the full-scope of the invention claimed including a “mobile device” as recited and construed as a “handheld computing device” is well-supported. In contrast, Petitioner’s argument and evidence are based on an improper claim construction and lack substantial supporting evidence. For these reasons, we determine that Oakes does provide written description support for “mobile device” as recited in the challenged claims of the ’432 patent and the ’432 patent is entitled to claim priority to the filing date of the application that issued as Oakes. As a result, Oakes is not prior art to the ’432 patent and all the challenges in the Petition fail because they rely on Oakes as prior art.” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“On this record and for purposes of deciding whether to institute trial, we construe “mobile device” as “handheld computing device,” because both parties ask us to adopt the District Court’s claim construction. 8 We do not 8 Petitioner does not dispute that we should “adopt[ ] the claim constructions [Patent Owner] advanced and the Court adopted in [the PNC Litigation].” include the phrase “excluding laptops” as part of this construction as the arguments in support of this construction in the Petition are contradicted by the evidence and Petitioner has otherwise failed to support the inclusion of this phrase in the construction.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the technology described in the Specification of the ’432 patent and the cited prior art. For that reason, and in order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 13
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 10,482,432 - Truist Bank v. United Services Automobile AssociationInstitution deniedPTAB · May 16, 2023 · IPR2023-00143 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious, failing to establish motivation to combine Acharya and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has failed to show that a skilled artisan would have been motivated to combine the teachings of Acharya and King as set forth in sole independent claim 1 of the ’432 patent and as proposed in the Petition. On this basis, Petitioner has failed to show a reasonable likelihood of prevailing with respect to any of the claims challenged in the Petition. We, therefore, deny the Petition and do not institute inter partes review. III. CONCLUSION For the reasons discussed above, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. 14–15. These arguments speak to whether a skilled artisan could have made the substitution of a “mobile device” for the RTC disclosed in Acharya but fail to provide a reason as to why a skilled artisan would have been motivated to make the substitution. Belden Inc. v. Berk-Tec LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner acknowledges that Acharya requires devices that “would have operated from the convenience of a customer’s home.” Pet. 14. As Petitioner acknowledges that Acharya requires operating from a customer’s home, there would seem to be no reason to use a “mobile device.”” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“Pet. 5 (citing Doermann Decl. ¶¶ 24–26). “For the purposes of this Preliminary Response only, Patent Owner applies the skill level of a [POSA] proposed by Petitioner,” but “may propose a different level of skill in the art in the event that the Board institutes review.” Prelim. Resp. 22. Petitioner’s proposal is consistent with the technology described in the Specification of the ’432 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “the Board need not construe any terms[] because the claims are invalid under any reasonable interpretation.” Pet. 7 (citing Ex. 1003 (Doermann Decl.) ¶¶ 27–31). “Patent Owner does not take any position regarding claim construction at this stage in the proceedings.” Prelim. Resp. 22. We agree with Petitioner that no claim construction is necessary to make this decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,432 - PTAB · Mar 22, 2023 · IPR2022-01344 · APJ Barbara A Parvis · IPR · Institution
Institution was denied for claims 3–11 because the Petition did not show a reasonable likelihood of proving obviousness over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (emphasis added). “The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” Id. (emphasis added). We, therefore, consider the arguments and evidence presented in the Petition, including the testimony of Dr. Layton, as well as the arguments and evidence in the Preliminary Response, including the testimony of Dr. Stone, in determining what the drawings of Christensson would have conveyed to a person having ordinary skill in the art. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for patent owner
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we, therefore, do not adopt that aspect of the proposal. We agree with Patent Owner that Petitioner has not made a sufficient showing regardless of which definition we adopt. Accordingly, for purposes of this Decision, with the exception of the “at least” terminology noted above, we use Petitioner’s assessment of the level of skill for one of ordinary skill in the art in our analysis below.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petition, without further testimony (id.) does not remedy the deficiency. Dr. Layton’s Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that the yellow highlighted circle illustrates opening 26h and the blue highlighted circle illustrates opening 30h. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Dr. Stone’s testimony that “Figure 7 is a bottom view of the Christensson connector, and Christensson could be illustrating relative depth of the openings in the housing and electrical contact member” (Ex. 2001 ¶ 146) is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 3:5, Fig. 7. Also, Dr. Stone’s testimony that a person having ordinary skill in the art would not have understood Figure 7 of Christensson “as clearly illustrating the opening in the electrical contact being any larger or smaller than the opening in the housing” (Ex. 2001 ¶ 146) also is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 6:34–39, Fig. 7. We, therefore, credit and give significant weight to the testimony of Dr. Stone regarding Figure 7 (Ex. 2001 ¶ 146) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 88–89) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 88–89) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). As a result, we find Figure 7 of Christensson does not describe element 3.3, i.e., “having a second opening disposed therein, the second opening disposed substantially concentrically to the first opening, wherein the perimeter of the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first opening 26h and second opening 30h is consistent with and supported by the text of Christensson. Claim 3, however, requires “wherein the perimeter of the second opening is less than the perimeter of the first opening” and that requirement is not supported by the quote of Christensson relied on by Petitioner. Contrary to Petitioner’s argument (Pet. 28–29), the quote of Christensson describes only “oblong opening 26h” and “similarly shaped opening 30h.” Ex. 1008, 6:34–39 (emphasis added). Petitioner does not emphasize the portion of the quote of Christensson that describes opening 26h as “slightly larger at its forward end.” Ex. 1008, 6:34–39. Also, Petitioner relies on the entirety of opening 26h as meeting the 28–29. For completeness, however, we note that the forward end portion of the first opening does not satisfy Petitioner’s construction of “first opening,” which is “the aperture, or a hole extending through the bottom wall of the housing from the bottom surface of the housing to the inner surface of the bottom wall that is sized to allow a press stud to extend therethrough.” Pet. 15 (citing Ex. 1002 ¶ 49). Accordingly, Petitioner’s arguments regarding the size of the perimeter of Christensson’s second opening are not supported by the quote of Christensson. Neither Petitioner nor Dr. Layton rely on any other text in Christensson for showing element 3.3. Pet. 28–30; Ex. 1002 ¶¶ 88–89.” slip op. at 17
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,038,484
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.