- ROKU, Inc. v. Dolby International ABInstitution deniedPTAB · Apr 3, 2025 · IPR2024-01354 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that claims 1–17 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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). 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). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’757 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not present an alternative definition. See Prelim. Resp. 10 (“For purposes of this preliminary response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’757 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶¶ 19–24), we apply the level of skill set forth above.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pet. 9. Petitioner also identifies functions and disclosed acts associated with such steps “[t]o the extent the Board determines that the limitations are written in step-plus-function format.” Pet. 9–12. Petitioner argues “whether the terms are step-plus-function is immaterial because the cited art renders the claims obvious under both the step-plus-function constructions and the terms’ plain-and-ordinary meanings.” Pet. 12. Petitioner argues all other claim terms should receive their ordinary and customary meaning. Pet. 12 (citing Ex. 1003 ¶¶ 96–98). Patent Owner responds that “[a]ll claim terms should be construed according to the Phillips standard,” without more. Prelim. Resp. 10–11. We agree with Petitioner that whether the claimed “step” terms are deemed step-plus-function is “immaterial” in deciding whether to institute inter partes review in this case, because the cited asserted art would apply in the same or substantially the same manner either way. Thus, we do not find that the express construction of any term is necessary for this decision.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner and find that Petitioner does not sufficiently explain why the skilled artisan, given Mahieux, would have had a rational reason to modify Mahieux to keep track of, let alone make use of, perceptibly significant frequency bands. Indeed, Patent Owner’s declarant, Dr. Kyriakakis, persuasively testifies why modifying Mahieux to do so would have made no sense to the skilled artisan: It would not have made sense to modify Mahieux’s system to instead count the number of audible frequency bands (e.g., the number of audible frequency bands B1-B3), as such a count would play no role in Mahieux’s bit allocation. Indeed, as Mahieux’s bit allocation focuses on the number of non-zero coefficients in each individual frequency band in isolation and without regard to the aggregate number of total audible frequency bands of the overall spectrum, generating an aggregate number of total audible frequency bands (e.g., by counting) serves no purpose in Mahieux’s allocation scheme. Further given Mahieux’s focus on allocating bits to frequency coefficients in individual frequency bands in isolation from other bands, [the skilled artisan] would fail to find any use for such an aggregate number or count. Ex. 2002 ¶ 92 (cited at Prelim. Resp. 23). Thus, we find Petitioner does not sufficiently explain why modifying Mahieux to keep track of perceptibly significant frequency bands would have presented itself to the skilled artisan as an option at all, let alone an option that would have been obvious to try. See Rolls-Royce, PLC v. United Tech. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (“[The skilled artisan] must have ‘good reason to pursue the known options within his or her technical grasp.’”).” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,339,757 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Empire Technology Development LLCInstitution deniedPTAB · Jan 2, 2025 · IPR2024-00897 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were unpatentable over Haustein, Ban and Wang, or Tang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we do not institute inter partes review of any claims of the ’331 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience in the research, design, development, or testing of wireless data substituting for experience and vice versa.” Pet. 8 (citing Ex. 1002 ¶¶ 35– 36). Patent Owner does not contest the characterization offered by Petitioner. See Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’331 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner has not established a reasonable likelihood of prevailing on this ground. We turn to our analysis of limitation 1[f], which is dispositive of this ground. Before we do, we briefly describe Petitioner’s contentions for the earlier limitations to provide context for our analysis of limitation 1[f] below.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“First, to make this contention, Petitioner relies on Haustein’s mention of a channel “coherence time” and its statement that it is common “to insert a pilot grid with certain spacing in time.” Pet. 30 (citing Ex. 1005 ¶ 3). The remainder of Petitioner’s contentions for this limitation are based on Dr. Valenti’s testimony regarding the knowledge of one of ordinary skill in the art. See id. at 30–31 (citing Ex. 1002 ¶¶ 115–117). Petitioner, therefore, relies on Dr. Valenti’s testimony to essentially supply a limitation that is missing from Haustein. Under the circumstances here, we determine this is insufficient to carry Petitioner’s burden. See Xerox Corp. v. Bytemark, Inc. IPR2022-00624, Paper 9, 16 (PTAB Aug. 24, 2022) (precedential) (explaining that relying on expert testimony “is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art.”)” slip op. at 19
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,565,331 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13
- BurdenNot reached
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
Claim constructioncites KSR · GrahamPatents in suitUS 9,232,168 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution deniedPTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,997,660 - Teladoc Health, Inc. v. Data Health Partners, Inc.Institution deniedPTAB · Sep 16, 2024 · IPR2024-00618 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted obviousness combinations teach compiling provider data without client input to generate a score.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 7 (citing Ex. 1012 ¶ 36). At this time, Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 2. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’812 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We finally consider the disputed limitation “without input from the clients.” Petitioner argues that data inputted by a provider, and not the client, “is without input” from the client. See Pet. 51 (citing Ex. 1012 ¶ 141). Patent Owner distinguishes between entered data and compiled data. See Prelim. Resp. 19–20 (“[T]he element in claim 16 does not require data entry without input from the patients. Instead, . . . claim 16 recites that ‘instructions are executed by the processor to: . . . compile data’”). Patent Owner thus argues that the negative limitation “without” excludes client input from the compiled data to generate a score, not the entered data as a whole. See id. In other words, both providers and clients may input data, but the score is generated from data collected from the providers, not the clients. We agree with Patent Owner’s position—that the compiled data used to generate a score includes client data received from the providers and excludes (is without) input from the clients—as consistent with the plain and ordinary meaning of the claim limitation. This reading gives meaning to the express limitation “without input from the clients.” See Phillips, 415 F.3d at 1314 (“the use of a term within the claim [may provide] a firm basis for construing the term”). We next consider whether this interpretation is consistent with the intrinsic evidence.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). slip op. at 6
- BurdenNot shown unpatentable
“In sum, none of Petitioner’s citations to Douglas appear to address compiling data without input from the client to generate a score. Petitioner’s declarant, Dr. Bergeron, does not provide any further explanation of why one of ordinary skill in the art would compile data without input from the client to generate a score, nor a reason to modify Douglas to do so. See Ex. 1012 ¶¶ 141–142, 90–91. Instead, Dr. Bergeron merely provides the conclusion mirrored in the Petition. See Ex. 1012 ¶ 141. Finally, Petitioner does not rely on Klotsche, Virginia, or Wager for the disputed limitation “without input from the client.” See Pet. 32 (discussing Klotsche), 33 (discussing Virginia), and 58–59 (discussing Wager). Based on the record before us, Petitioner has not established that the asserted art teaches or suggests all of the claim elements and limitations of claim 16. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its assertion that claim 16, and dependent claim 17, would have been obvious over Douglas, Klotsche, and Virginia or Douglas, Klotsche, Virginia, and Wager.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,061,812 - Motorola Solutions, Inc. v. Sta Group LLCInstitution deniedPTAB · Aug 6, 2024 · IPR2024-00479 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–11 were obvious over Choksi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 5
- BurdenDecided for patent owner
“Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10
§ 103 obviousnesscites GrahamPatents in suitUS 9,319,852 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Jan 3, 2024 · IPR2023-00939 · APJ Sharon Fenick · IPR · Institution
The Board denied institution on claims 1–24 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art under § 102(e).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 7. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent claims it challenges are unpatentable. 35 U.S.C. § 312(a)(3). Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1–24 of the ’407 patent under the asserted grounds, all of which rely on the Slivka Appendices.” slip op. at 17
- BurdenDecided for patent owner
“We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) that were not published with the ’695 patent (Ex. 1004). As discussed herein, we conclude, on the record before us, that Petitioner has insufficiently shown that the relied-upon appendices qualify as prior art under 35 U.S.C. § 102(e), as Petitioner asserts. See Pet. 10.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are not part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record, Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents, should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 14–15, 21 (citing 65 Fed. Reg. 57,024). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. § 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’407 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:8–19. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). Pet. 10; Prelim. Reply. On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. § 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e), as Petitioner asserts. See Pet. 10.” slip op. at 15
§ 102 anticipationPatents in suitUS 8,510,407 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Jan 3, 2024 · IPR2023-00938 · APJ Sharon Fenick · IPR · Institution
The Board denied institution on claims 1–16 because the petitioner did not show a reasonable likelihood that the Slivka Appendices qualified as prior art under § 102(e).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. § 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e), as Petitioner asserts. See Pet. 8. III. CONCLUSION Each of Petitioner’s invalidity contentions relies, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 5. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent claims it challenges are unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Similar to the ʼ257 patent at issue in Southwest Software, the ’695 patent omits the Slivka Appendices. In contrast to the ʼ257 patent, the ’695 patent does not even contain an express statement about the incorporation of appendices. Accordingly, as was the case for the ʼ257 patent with respect to the Program Printout Appendix prior to the filing of the certificate of correction, we find the’695 patent does not include the contents of the Slivka Appendices.” slip op. at 14
- BurdenInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 6
§ 102 anticipationPatents in suitUS 8,020,083 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18
- BurdenDenied
“We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17
§ 102 anticipationPatents in suitUS 9,369,545 - Commscope Technologies LLC v. Belden Inc.Institution deniedPTAB · Nov 30, 2023 · IPR2023-01058 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Patent Owner effectively disclaimed all challenged claims 1–8 and 48–50.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“A conference call was held with the parties on October 24, 2023, pursuant to Petitioner’s request for permission to file a motion requesting that the Board construe Patent Owner’s disclaimer of all challenged claims as a request for adverse judgment. Patent Owner opposed this request. During the call, Petitioner argued that it intended to rely on Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018) to argue that Patent Owner’s disclaimer should be construed to be a request for adverse judgment, which Petitioner argued was appropriate under the circumstances of this case. Patent Owner opposed, citing the Board’s precedential General Electric decision as governing in the present circumstances. General Electric, Paper 9 (relying on 37 C.F.R. § 42.107(e), denying institution when Patent Owner had submitted a pre-institution disclaimer of all challenged claims). During the call, we denied Petitioner’s request for authorization to file the motion. Although Arthrex permits the Board to grant adverse judgment when a patent owner cancels all claims at issue prior to institution (see Arthrex, Inc., 880 F.3d at 1350 (“37 C.F.R. 42.73(b) permits the Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision” (emphasis added)), Petitioner failed to identify any persuasive reason why the Board should do so in present circumstances. See also Cisco Systems, Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13 (PTAB Mar. 14, 2021) (determining that denial of institution without granting adverse judgment was sufficient when Patent Owner had submitted a pre-institution disclaimer of all challenged claims); General Electric, Paper 9.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 8
NonePatents in suitUS 10,832,833
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.