• Innolux Corporation v. Phenix Longhorn LLCInstitution denied
  PTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • BurdenDecided for patent owner

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

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

    “and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,557,788
• Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution denied
  PTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution

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

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

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

    “Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 successMotivation not foundNot shown unpatentable

    “Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See 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.”).” slip op. at 26

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,641,841
• 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 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art 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. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner

    “Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. 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 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,554,196
• 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
• T-Mobile USA, Inc. / AT&T Services Inc. et al. v. Cobblestone Wireless, LLCInstitution denied
  PTAB · Jun 3, 2024 · IPR2024-00138 · 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 alone 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.” slip op. at 20

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

    “Petitioner asserts that flexible subframes are sub-optimal because they can be more prone to interference than fixed subframes. Pet. 34 (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. 62. 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. 3. Claims 11–13, 15, and 17 Claims 11–13 and 15 depend from independent claim 10, and independent claim 17 includes claim requirements 17.2 and 17.4, which are counterparts to claim elements 10.3 and 10.4. Ex. 1001, 19:21–44, 19:51–54, 20:17–22, 20:37–40. 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 claims 11–13, 15, and 17 would have been obvious over Gaal.” slip op. at 20

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

    “Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Gaal’s system of assigning subframes as fixed or flexible with Khoryaev’s teachings of configuring a subframe as flexible in response to neighboring cell interference. Pet 61–65 (citing Proctor Decl. ¶¶ 258–263). Petitioner argues, inter alia, that Gaal does not provide specific details of how subframes are selected as fixed or flexible, and that Khoryaev provides additional details regarding how a subframe can be designated from fixed to flexible in response to interference considerations. Pet. 61 (citing Ex. 1004 ¶ 75; Ex. 1018, 6:34–35, 7:26–35, 8:20–9:15, 9:30–55; Proctor Decl. ¶¶ 259–260.) Based on this combination, Petitioner supplements it arguments that Gaal alone teaches the subject matter of claim requirements 10.2 and 10.3, asserting that Khoryaev “teaches that its methods for converting a subframe to a flexible subframe ‘can take into account inter-cell interference from macro cells’ . . . resulting in ‘effective implementation of adaptive change of UL-DL configuration at pico cells.’” Pet. 65 (citing Ex. 1018, 6:34–35, 7:26–35; Proctor Decl. ¶ 265). Petitioner argues that Khoryaev thus teaches determining that a subframe is sub-optimal for the uplink and downlink channel due to measured inter-cell interference, as determined by use of CSI/CQI measurements. Id. at 65–66 (citing Ex. 1018, 5:59–6:5; 7:32–35, 8:20–24, 12:35–40; Proctor Decl. ¶¶ 265–266). Petitioner further argues that “Khoryaev teaches that in response to ‘tak[ing] into account inter-cell interference from macro cells,’ Khoryaev will (1) convert the pico subframe from fixed to flexible, and (2) mute or offload traffic for the macro subframe.” Id. at 67–69 (citing Ex. 1018, Figs. 7, 8, 7:26–35, 8:20–9:15, 9:30–33, 9:39–41, 9:45–58; Proctor Decl. ¶¶ 268–273).” slip op. at 22

  • 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.” slip op. at 25

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,368,361
• Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution denied
  PTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.

  RulingsInstitution decision

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

    “which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6

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

    “the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11

  Claim constructionDiscretionary denial
  Patents in suitUS 6,845,128
• Tp-Link Corporation Limited v. Netgear, Inc.Institution denied
  PTAB · Mar 8, 2024 · IPR2023-01393 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–24 unpatentable over Morikawa or Serizawa.

  RulingsInstitution decision

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

    “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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response we conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’714 patent.” slip op. at 2

  • BurdenDecided for patent owner

    “Critically, though, Petitioner does not adequately show that Morikawa actually teaches FDD or receiving and transmitting data at the same time. We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 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.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 10

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

    “We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 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.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a [b]achelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10 (citing Ex. 1002 ¶¶ 53–56). Patent Owner asserts that “a person of ordinary skill in the art would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data communication, or wireless networking systems.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 25). On the current record, we do not discern a meaningful difference between the parties’ proposals, and we apply Petitioner's proposed level of ordinary skill for the purposes of this Decision. slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,936,714
• Uv Engineering Solutions LLC v. Trojan Technologies Group UlcInstitution denied
  PTAB · Dec 11, 2023 · IPR2023-01015 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–24 were unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under 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(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The primary dispute between the parties is whether the person having ordinary skill in the art works with lamps generally (Petitioner) or works with ultraviolet lamps for fluid treatment systems (Patent Owner). Although the specification of the ’654 patent focuses on ultraviolet lamps for fluid treatment systems (see Ex. 1001, 1:24–2:29), the claims of the patent are not so limited. Rather, the claims broadly claim “lamps” without reciting any field of use. See id. at 6:2–8:24. Because the claims are not limited to ultraviolet lamps or fluid treatment centers, Petitioner’s formulation of the level of skill is more consistent with the claims. Accordingly, we adopt Petitioner’s proposed description of the person having ordinary skill in the art.” slip op. at 10

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

    “Because construction of the disputed claim limitation is not necessary to resolve the controversy, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioner argues that a person having ordinary skill in the art would have “modif[ied] the terminal pins 126, 128, 130, and 132 of Ellner to be angled relative to the longitudinal axis as shown in Titchener so as to create a reliable connection between cables as disclosed in Titchener.” Pet. 12. Petitioner further argues that “[s]uch a modification would be a simple substitution of one known element (i.e., angled connectors 5a and 5b of Titchener) for another (i.e., non-angled terminal pins 126, 128, 130, and 132 of Ellner) to obtain predictable results.” Id. at 12–13. According to Petitioner, the combination of the teachings of Ellner and Titchener result in a lamp in which “each of the first elongate electrical connector (i.e., terminal pin 126, 128 modified to be angled as shown in Titchener) and the second elongate connector (i.e., terminal pin 130, 132 modified to be angled as shown in Titchener) configured to form an oblique angle with respect to the longitudinal axis.” Id. at 13.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,167,654
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00593 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–62 were unpatentable under the asserted §103 grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 39; see also id. at 45–46 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt.” slip op. at 26

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “E. Real Parties in Interest Petitioner identifies Google LLC and YouTube, LLC as real parties in interest. Pet. 1. Patent Owner identifies Robocast, Inc., as a real party in interest. Paper 5, 2.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1102 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1123, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 22 and 46, as well as dependent claim 45, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1123, 2–13; Ex. 2107, 5; Prelim. Resp. 9. For purposes of this Decision, we accord all other terms recited in the challenged claims their plain and ordinary meaning. See Ex. 1123, 17–20, 26–29 (court adopting plain and ordinary meaning of “plurality of accessible resources,” “content,” “without requiring user input,” “in accordance with said show structure,” “providing,” and “search results”); see Prelim. Resp. 8 (Patent Owner advocating that “any additional claim language be[] accorded its plain and ordinary meaning”).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932

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.