- PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Feb 4, 2025 · IPR2024-01144 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because AT&T failed to show a reasonable likelihood that claims 1–22 were obvious over either Nokia and the 3GPP-Standard or Ericsson and the 3GPP-Standard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any responses thereto shows “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). Taking into account Innovative Sonic’s Preliminary Response, AT&T’s Preliminary Reply, and Innovative Sonic’s Preliminary Sur-reply, we conclude that the information 1 We do not reach whether we should exercise our discretion to deny the Petition under Fintiv because, as we explain below, we deny the Petition based on the merits. See infra Sections II.B.5 and II.C.1. presented in the Petition does not establish that there is a reasonable likelihood that AT&T would prevail in demonstrating at least one of claims 1–22 of the ’489 patent is unpatentable. We, therefore, deny AT&T’s Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the testimony of Dr. Hansen, AT&T argues the following: [a]s of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’489 patent . . . would have had a [Bachelor of Science] in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A [person of ordinary skill in the art] would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. More education may supplement practical experience or vice versa. Pet. 14 (citing Ex. 1002 ¶ 368). In the Preliminary Response, Innovative Sonic does not address AT&T’s assessment of the level of skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt AT&T’s uncontested assessment of the level of skill in the art because it is consistent with the ’489 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“issue fares no better. With one exception, Dr. Hansen, relies on the same disclosures of the Update for 3GPP TS 36.331 v.9.4.0 to support his testimony, which, as we explain above, does not account for the plain language of the disputed limitation. Compare Pet. 26–27, 43, with Ex. 1002 ¶¶ 87–90. In addition, Dr. Hansen testifies that a person of ordinary skill in the art would have understood that “the E-UTRAN configuring the UE with one or more SCells would necessarily include the configuring of at least one SCell by a source eNB to a UE.” Ex. 1002 ¶ 91 (emphasis added). But neither AT&T nor Dr. Hansen establish inherency in its obviousness analysis. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194– 95 (Fed Cir. 2014) (recognizing that “inherency may supply a missing claim limitation in an obviousness analysis,” but limiting the doctrine of inherency “only when the limitation at issue is the ‘natural result’ of the combination of prior art elements” (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Apart from the conclusory assertion above, Dr. Hansen does not identify sufficient evidentiary support demonstrating that the requirement identically recited in each of independent claims 1 and 12 of “configuring at least one SCell by a source eNB to a User Equipment (UE)” would have been the “natural result” flowing from the Update for 3GPP TS 36.331 v.9.4.0’s disclosure of the E-UTRAN configuring the UE with at least one SCell. PAR Pharm., 773 F.3d at 1195. Accordingly, we do not credit Dr. Hansen’s testimony that implicates the doctrine of inherency because it not supported by evidence of record.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, AT&T contends that “the Board does not need to expressly construe any [claim] terms to resolve the arguments presented herein” because the asserted prior art “discloses all limitations under any plausible construction.” Pet. 14 (citing Ex. 1002 (Declaration of Dr. Christopher Hansen) ¶ 456). In the Preliminary Response, Innovative Sonic “agrees with [AT&T] that no [claim] term needs to be construed.” Prelim. Resp. 4 (citing Pet. 14). For purposes of this Decision, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. 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 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,237,489 - Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstitution deniedPTAB · Jan 28, 2025 · IPR2024-01047 · APJ Stacey G White · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Patent Owner’s definition of a person of ordinary skill in the art is similar to Petitioner’s definition with some variation in the amount of education and specificity as to the experience required. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. We note, however, that our determination in this proceeding would be the same under either formulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a [person of ordinary skill in the art]” and does not propose construction of any claim term. Pet. 4. Patent Owner also does not propose construction of any claim term. See generally, Prelim. Resp. Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“feature of scanning a wireless communication network by the mobile device receiving the streaming data for re-routing, to identify devices connected to the wireless network, are identified as capable to handle the routed media content.” Prelim. Resp. 5–6 (emphasis added) (citing Ex. 1002, 237–238). Thus, we understand the recited language to require scanning to find devices that have been identified as compatible, not just scanning to find devices and later determining which of those devices, if any, are compatible. Zhang, on the other hand, scans to find devices in the network, but that scan does not seek out devices identified as compatible. Specifically, Zhang scans to find its “helper environment” which is composed of “devices around them.” Ex. 1004, code (57); see also id. 2:16–20. The first step of Zhang’s process is to find “a local device [that] offers helper service.” Id. at 3:62–63. In the next step, Zhang then interrogates the device it scanned for in order to find out whether that device offers the necessary service. Id. at 3:63–4:5. In other words, Zhang is not scanning for compatible devices, but rather it is scanning for any device around it and then asking whether the device provides the necessary service. We find this to be insufficient because the claim is not merely seeking to identify a compatible device, but rather it is scanning “to identify a plurality of devices, identified as compatible to handle said media content.” Thus, for these claims it is not enough that the network be scanned for devices; instead, the network must be scanned for devices “identified as compatible.” The inclusion of Rofheart does not address this issue. Rofheart is relied upon to teach “that a local device identifies and connects with a plurality of remote devices.” Pet. 29. According to Petitioner, one of ordinary skill in the art would have used Rofheart’s teaching to improve Zhang by adding “the benefit of providing users control to select one or more of a plurality of devices, rather than always connecting to the first identified available compatible device, as taught by Zhang.” Id. As such, neither of the cited references addresses the recited scanning for devices identified as compatible.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,699,223 - Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution deniedPTAB · Jan 27, 2025 · IPR2024-01049 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 22–24 would have been obvious over Chihara, BluetoothSpec, Everett, and Chang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review. CONCLUSION For the reasons above, Petitioner has not shown that there is a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’866 patent is unpatentable. Therefore, we deny the Petition. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “streaming device is receiving rerouted data from surrounding media handling devices, rather than rerouting data to surrounding media handling devices.” Pet. 19–20. This is in accord with the specification of the ’866 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1038, 7:22– 24 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. 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))). evidence to justify such a departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’866 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives streaming or media data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted streaming data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 22, which requires the streaming device (phone 11B) to indicate its availability to receive streaming data rerouted from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,866 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - LG Electronics, Inc. v. Constellation Designs, LLCInstitution deniedPTAB · Apr 20, 2023 · IPR2022-01482 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that Sommer taught the optimized-for-capacity limitation in independent claims 1 and 17, which also appears in the challenged dependent claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s argument is conclusory and does not sufficiently explain how Sommer teaches a “constellation optimized for capacity.” Patent Owner argues that because Petitioner does not construe “optimized,” the Petition provides no “metric by which the Board could determine whether Sommer discloses optimized.” Prelim. Resp. 37; see also id. at 37–38. We agree that a construction of “optimized” could have provided a metric for us to better evaluate Petitioner’s argument. See 37 C.F.R. § 42.104 (the Petition should “provide a claim construction for the challenged claims.”). Without a claim construction and with insufficient explanation for how Sommer teaches that its constellation is “optimized for capacity,” the Petition fails to establish a reasonable likelihood of showing that Sommer teaches the last limitation of independent claims 1 and 17. For example, although the Petition argues that Sommer’s constellations provide a capacity gain versus other methods, it is unclear whether Petitioner is arguing that this improvement means the constellation is optimized. If this were Petitioner’s position, the Petition does not explain why one of skill in the art would have understood an improvement that results from using Sommer’s constellations to be the same as optimizing the constellation as required by the claim.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 37. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’761 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Though Patent Owner’s evidence establishes that the term “optimized” is common and understood in the art, we determine that it is not necessary for us to construe “optimized” for our decision. We further determine that no other terms need to be construed. 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 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Further, the cited testimony of Petitioner’s declarant for this limitation is identical to the Petition. Compare Pet. 54–55, with Ex. 1003 ¶ 129. Because the declarant testimony, like the Petition, is conclusory in nature with respect to how Sommer teaches optimization, it is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (August 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,761 - ROKU, Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01258 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that Alger anticipated claims 184, 185, and 188–190 or that Alger-based combinations rendered claims 186, 187, 189, 191, and 192 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “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) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Parallel petitionsNot reached
“1 Roku also filed a Notice Ranking Petitions, arguing that we should institute trial both in this proceeding and in IPR2021-01257 where Roku challenges the same claims of the ’819 patent on different grounds. Paper 3; see also Paper 8 (IOENGINE’s response). Because we deny institution on the merits, we need not address whether it would be appropriate to institute trial in both proceedings.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 21–22 (citing Ex. 1103 ¶¶ 54–58). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1103 ¶¶ 54–58). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 8. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1101, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 13. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 14. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1101, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,447,819 - Google LLC v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,880,721 - Qualcomm Incorporated v. Fedex Corporate Services, Inc.Institution deniedPTAB · Oct 11, 2022 · IPR2022-00587 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’042 patent. Accordingly, we do not grant Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Patent Owner argues that Petitioner should have named Roambee Corp. (“Roambee”) as a real party-in-interest. See, e.g., Prelim. Resp. 1. Patent Owner argues we should decline to institute review because Petitioner failed to comply with the requirement to name real parties-in-interest in good faith, which prevents Petitioner from maintaining the Petition’s original filing date. Id. at 1–2. We need not address Patent Owner’s arguments relating to naming the real parties-in-interest because we do not institute review for other reasons discussed herein.” slip op. at 3
- Skill levelSkill level petitioner adoptedOther
“On the current record, we find Petitioner’s contentions that the skilled artisan would have had “at least a bachelor’s degree” and “at least two years” of experience to be too vague as Petitioner’s contentions encompass skill levels beyond the proposed level without a defined limit. We, therefore, adopt Petitioner’s proposal except we do not adopt the “at least” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’042 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party provides an express construction for any term of the challenged claims. Pet. 18; see generally Prelim. Resp. For the reasons provided below, we do not discern a need to construe explicitly any claim See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,974,042 - Tesla, Inc.Institution deniedPTAB · May 31, 2022 · IPR2022-00110 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the foregoing reasons, we find Petitioner insufficiently shows that Robinson discloses functional limitation 1[e](2). Nor does Petitioner include an obviousness analysis explaining why one of ordinary skill in the art would have modified Robinson’s system to arrive at an “energy storing component” with said function. See generally Pet. 60–69. Therefore, we find Petitioner has also insufficiently shown that Robinson renders functional limitation 1[e](2) obvious to one of ordinary skill in the art.” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“E. Discretion under 35 U.S.C. § 325(d) Patent Owner presents arguments (Prelim. Resp. 17–27) that the same or substantially similar art and arguments presented in the Petition were previously presented to the Office and contends that the two-part framework (see Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)) that the Board applies in evaluating such arguments under § 325(d) “strongly favors denying institution under § 325(d)” (Prelim. Resp. 17) in this case. In view of our determination that Petitioner has not met the threshold for instituting review on the merits, we decline to reach Patent Owner’s arguments for a discretionary denial.5” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner
“That being said, we address here the construction of the claim phrase “network medium” as it undergirds our analysis. Ex. 1001, 21:15, 27, and 31 (claim 1); 22:63, 66, and 23:16 (claim 27).” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“A POSITA at the time of the alleged invention would have a Bachelor’s or Master’s degree in electrical engineering, or a related field, with at least several years of practical or research experience in the design and development of electrical energy power and storage systems. Pet. 7 (citing MacCarley Decl. ¶ 13). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition because it is not contested. D. Overview of the Prior Art References 1. Robinson (Ex. 1006) Robinson is titled “Portable Power Manager Operating Methods.” Ex.” slip op. at 9
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,008,869
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.