- Apple Inc. v. Rally AG LLCInstitution deniedPTAB · Mar 31, 2025 · IPR2024-01446 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that any challenged claim was obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1003 ¶ 24). Patent Owner does not comment on Petitioner’s proposal nor does it propose a level of ordinary skill. Prelim. Resp. 25. At this stage, the level of ordinary skill is not at issue. Petitioner’s undisputed definition is supported by the testimony of its experts and is consistent with the ’107 patent and the asserted prior art. Accordingly, for purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute an inter partes review. 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)). Neither party proposes any term for express claim construction. Pet. 20; Prelim. Resp. 24. We determine that no express construction of any claim term is necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A “motivation to combine may be found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (citing KSR, 550 U.S. at 418–21). While common sense might form a basis for showing limitation 13(e), Petitioner does not allege reliance on common sense or any other motivation to combine. We are not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,361,107 - 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 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - Cisco System, Inc. v. Umbra Technologies Ltd.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00498 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Cisco did not show a reasonable likelihood that claims 1–26 were obvious over Shieh and Potti, principally for lack of a sufficient rationale to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Preliminary Reply, and UMBRA’s Preliminary Sur-reply, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Cisco would prevail in challenging any one of claims 1–26 of the ’482 patent as unpatentable. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Reddy, Cisco argues the following: a [person of ordinary skill in the art] in April 2015 timeframe would have been familiar with communication networks having a distribute firewall system in the cloud. A [person of ordinary skill in the art] would have a working knowledge of the function performed by firewalls including stateful inspection and deep packet inspection. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in computer network security of at least four years. Pet. 14 (citing Ex. 1003 ¶ 40). UMBRA does not address the level of skill in the art in its Preliminary Response. See Prelim. Resp. 1–16. To the extent necessary, and for purposes of this Decision, we adopt Cisco’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Reddy and it is consistent with the ’482 patent and the asserted prior art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Notably absent from the “State of the Art” section is a specific reason why a person of ordinary skill would take Potti’s disclosure of performing DPI on a cloned copy of traffic and apply it to Shieh’s service processing module 313, which Cisco relies on to teach the claimed “second perimeter firewall.” See Pet. 15–19; see also id. at 40 (arguing that Shieh’s service processing module 313 (pink) teaches the claimed “second perimeter firewall”). Instead, Cisco generally discusses the evolution of firewall technology and its move to the cloud as of April 2015, but does not identify the benefits that result from modifying Shieh in this way. At best, Cisco asserts that “[t]he prior art references, and the discussions of what was known to a [person of ordinary skill in the art], provide the factual support for the general description of the state of the art at the time of the invention, and provide additional motivation to modify or combine the references.” Pet. 15. In our view, merely providing a general description of the state of the art and asserting that it provides a motivation to combine, without providing the necessary factual underpinnings to support the purported benefits that result for combining the relevant teachings of Shieh and Potti, is akin to stating in a conclusory fashion that this proposed combination “would have been obvious.” See In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been ... ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’ ”).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“A review of Cisco’s testimony from its declarant, Dr. Reddy, reveals no additional explanation as to why a person of ordinary skill would have been motivated to combine the teachings of Potti with those of Shieh. See Ex. 1003 ¶¶ 130–137. These portions of Dr. Reddy’s testimony merely parrot the arguments presented by Cisco in the Petition. That is, he relies on a general description of the state of the art, without providing any additional explanation beyond the bare assertion in the Petition that a person of ordinary skill would have used purported “well-known techniques” to combine Shieh’s service processing module 313 with Potti’s disclosure of performing DPI on a cloned copy of traffic.” slip op. at 21
§ 103 obviousnesscites KSRPatents in suitUS 10,574,482 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01107 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on claims 9–14 and 16 under either asserted obviousness combination.
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 and any response 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01106 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because DJI did not show a reasonable likelihood of proving claims 1–5, 7, and 8 obvious, due to deficient and inconsistent treatment of “pilot identification information.”
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 and any response 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden to show a likelihood of prevailing in its challenge to independent claim 1 as presented in the Warner-Wakutsu-Shavit grounds, nor dependent claims 2– 5, 7, and 8, which include the same deficiencies.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” The Petition does not address the scope and meaning of this claim term, but Patent Owner argues (Prelim. Resp. 44– 46, 57–59; Prelim. Sur-Reply 3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. Highlighting the Petition’s inconsistencies, for limitations [1E] and [1J], Petitioner states “in Shavit . . . the pilot ‘types in or selects his name, the name of the co-pilot if any, and the aircraft’s serial number.” Pet. 32 (citing Ex. 1008 ¶ 108). For limitation [1H], however, Petitioner states Shavit’s “user credential for a pilot includes ‘pilot identification information.’” Pet. 39 (citing Ex. 1008 ¶ 87; Ex. 1003 ¶ 116). Responding to Patent Owner’s arguments that those positions are inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Servicenow, Incorporated v. Inquisient IncorporatedInstitution deniedPTAB · Jan 16, 2024 · IPR2023-01072 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–47 were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“argument does not change Petitioner’s recognition that the ’585 patent describes a data repository as including modules, such that an ordinarily skilled person would have understood a “module” to be a portion of a data repository. The ’585 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’585 patent, the term “module” appears in the claims; “module” also appears in the “SUMMARY,” in a manner that parrots the language of the claims. Ex. 1001, 2:1–14. The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Nonetheless, claim 48, which is not challenged in the Petition, does not use the term “module,” instead reciting limitations similar to those of claim 1 with express use of “means”-plus-function language, thereby and equivalents thereof. Ex. 1001, 20:47–22:3; see 35 U.S.C. § 112, para. 6 (2012). Under the doctrine of claim differentiation, we ascribe a broader meaning to the term “module” in claims 1–47.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“translator generates eight relational database tables, one for each class (i.e., (1) Component, (2) Analog Component, (3) Memory, (4) Dynamic Memory, (5) Static Memory, (6) Manufacturer, (7) Domestic [manufacturer], and (8) Foreign [manufacturer]), but Althoff’s system does not generate a relational database table called Class because there is no object called Class. Id. at 29–32 (citing Ex. 1006, 4:58–49, 5:8–10, Figs. 1, 8). We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 31–32. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored as table in the object database, there would be no need for Althoff to build a translator to translate objects into table.” Id. at 33. Petitioner relies on Moore’s disclosure of a virtual folders description database to teach the named text module recited in limitation 1[i]. Pet. 5, 28. Petitioner does not identify any disclosure in Moore that teaches the subject matter not disclosed by Althoff. Accordingly, we determine that Petitioner has not sufficiently shown that limitation 1[e] is taught or suggested by the combination of Althoff and Moore.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner’s Contentions Concerning Reasons to Combine Althoff and Moore Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Moore to improve end-user experience by avoiding the need for complicated SQL queries or for navigating complicated tables to access objects stored in Althoff’s database. Pet. 10. Petitioner contends that SQL queries to access databases are often beyond the capabilities of ordinary users, but such users are already familiar with working with folders. Id. at 11–12. Petitioner contends that, because represent it as a container that is like a folder, a person of ordinary skill would have had reason to combine Moore’s virtual folders with Althoff’s database to simplify use of such systems. Id. at 11–13 (citing Ex. 1003, White Decl. ¶¶ 62–69; Ex. 1007, 3:36–41).” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,219,585 - Servicenow, Incorporated v. Inquisient IncorporatedInstitution deniedPTAB · Jan 16, 2024 · IPR2023-01071 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 6 (2018). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response 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.” Considering the Petition, Preliminary Response, Preliminary Reply, Sur-reply, and all supporting evidence, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing for any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’468 patent “would have [had] a Bachelor’s degree in Computer Science and three to five years of industry experience in application development, database development, enterprise application management; or a Ph.D. specializing in the field,” but that “more education could compensate for less experience and vice versa.” Pet. 3 (citing Ex. 1003 ¶ 24). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’468 patent and the cited prior art, we apply it for purposes of this Decision. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Independent claims 14 and 27 do not use the term “module,”” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner relies on Althoff’s relational database as teaching the recited data repository and, inter alia, the recited element module. See Pet. 14–17. However, Petitioner relies on Althoff’s “class Class 301,” a class used by Althoff’s object-oriented database, as the basis for its arguments with respect to the recited class module. Pet. 21. Although Althoff provides a database translator for translation between object oriented and relational database structures (see, e.g., Ex. 1006, 3:4–6 (stating that “it would be advantageous to provide a method of compilation and translation between object oriented and relational database structures”)), we agree with Patent Owner that there is no object named “Class” or “Class 301” in the user’s object database in Althoff and that no object name “Class” is translated into a “class module” in the relational database. Prelim. Resp. 32. We further agree with Patent Owner that Petitioner points to nothing from either the user’s object database or the meta-model that is translated into a “class module” found in the user’s relational database. Id. As Patent Owner argues, class Class 301 in Althoff is not an object in the user’s object database, but instead is a class (i.e., a data type) defined by the meta-model that can be used by the user’s object database as a data type when the user creates objects. Id. at 29–30, 32, 37– 38. Still further, we agree with Patent Owner that Althoff teaches that relational databases and object databases are distinct and incompatible, a problem that Althoff seeks to address with its disclosed systems and methods. See Prelim. Resp. 25–26, 29 (citing Ex. 1006, 2:9–14, 3:4–24). Patent Owner’s contentions are also persuasive that there is neither any “‘class Class 301’ table” disclosed in Althoff, notwithstanding Petitioner’s assertions, nor any reason to generate such a table. See Prelim. Resp. 36–39 (citing Pet. 21). As Patent Owner notes, by creating separate Althoff preserves class information. Id. at 33. But Althoff does not state that class information for each user-created object is stored in a “row” of a “class Class 301 table” as asserted in the Petition, and we agree with Patent Owner that Althoff would have no need to describe a translation process to convert objects into tables if the classes of the object database were already stored “rows” in a “table.” Id. at 38. With regard to the Petition’s reference to Althoff’s disclosure that “each object of class Class 301 comprises information in table 3-2” (Pet. 21 (quoting Ex. 1006, 11:12–16)), we agree with Patent Owner that Table 3-2 of Althoff does not concern a row of a “class table”; instead, as Patent Owner explains, “Table 3-2 is merely a descriptive device in the specification of Althoff that describes in a two-column format the information stored within an object of type ‘Class’ in the user’s object database . . . in a form more easily accessible to the reader than a narrative.” Prelim. Resp. 38–39 (citing Ex. 1006, 11:15–47).” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,979,468
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.