- 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 - ADT LLC v. Vivint, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00642 · APJ Iftikhar Ahmed · IPR · Institution
The Board denied institution because ADT did not clearly map the references to the challenged claims or adequately explain why a skilled artisan would combine them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may not institute an IPR unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Taking into account Vivint’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that ADT would prevail in challenging any one of claims 1, 2, 10–14, and 25–27 of the ’769 patent as unpatentable. We, therefore, deny ADT’s Petition.” slip op. at 2
- BurdenDenied
“U.S.C. § 311(a), that identifies the challenged claims and the grounds for challenge with particularity, [35 U.S.C.] § 312(a)(3).” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1351 (2018); see also 37 C.F.R. § 42.104(b) (specifying necessary elements of a petition). Under 35 U.S.C. § 314(a), an IPR can be instituted only if there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). Even when a petitioner demonstrates a reasonable likelihood as to at least one claim, however, institution of an IPR remains discretionary. SAS Inst., 138 S. Ct. at 1351 (“§ 314(a) invests the Director with discretion on the question whether to institute review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Ulrich and Mathias, the reasoning provided is generic and does not clarify sufficiently which teachings from each reference it combines to account for all the limitations of claims 1, 2, and 10–14. In Belden Inc. v. Berk-Tek LLC, the Federal Circuit explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, a rationale to combine must not rely on hindsight, but must “imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”).” slip op. at 15
- Expert testimonyPetitioner expert discountedOther
“that “[s]imilarity in subject matter is insufficient,” by itself, “to establish that a [person having ordinary skill in the art] would have been motivated to combine references.” Prelim. Resp. 23–24 (citing Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (unpublished); Salpeter v. ARP Wave, LLC, IPR2019-01384, Paper 12 at 17 (PTAB Jan. 27, 2020)). Similar to Personal Web Technologies, ADT’s “reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined.” Personal Web Techs., 848 F.3d at 993; see Prelim. Resp. 25 (citing Apple Inc. v. MPH Techs. Oy, 28 F.4th 254, 262–63 (Fed. Cir. 2022) (finding expert testimony conclusory and improperly guided by hindsight based on use of the phrases: “would naturally have included”; “would be logical”; and “could be, and most logically would be”)). ADT neither explains why a person having ordinary skill in the art would have been motivated to combine the teachings of Ulrich and Mathias—as we understand ADT to be arguing—nor does it explain why a person having ordinary skill in the art would have been motivated to modify either Ulrich or Mathias such that either reference may be asserted in a single-reference obviousness ground. In addition, because Dr. Rhyne’s declaration testimony mirrors the arguments presented by ADT, his supporting testimony fares no better. Compare Pet. 13, with Ex. 1009 ¶¶ 64, 65.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,700,769 - Tencent Technology (Shenzhen) Co. Ltd. v. Yogesh RathodInstitution deniedPTAB · Jun 27, 2022 · DER2022-00002 · APJ Michael R Zecher · DER · Institution
The Board denied institution because Tencent did not make a sufficient showing that the named inventors conceived the invention allegedly communicated to Rathod.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.” 35 U.S.C. § 135(a)(1). We have authority to institute a derivation proceeding on behalf of the Director. 37 C.F.R. § 42.408(a). The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c).1 Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For the reasons set forth below, we conclude” slip op. at 2
- BurdenDenied
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6 To the extent Tencent expects us to scour the preliminary record to unearth supporting evidence of prior conception, we decline to do so. It is well-settled that Tencent is “master of its complaint.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). We are constrained by the arguments and evidence presented and developed in Tencent’s Petition, and we are not” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“6 We recognize that Tencent contends that the ’265 patent and the three applications in its priority chain lack sufficient written description support for the claimed invention. Pet. 17–28. We need not reach Tencent’s arguments that the three applications in the priority chain of the ’265 patent lack sufficient written description support for the claimed invention because, as we explain above, Tencent does not demonstrate that the named inventors in the ’371 application conceived, at any time, the inventions purportedly communicated to Mr. Rathod.” slip op. at 13
- Expert testimonyNot reached
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6” slip op. at 13
§ 112 disclosurePatents in suitUS 10,990,265 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,062,253 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked sufficient evidence and reasoning to show a reasonable likelihood of prevailing on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 9,818,274 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products, Inc.Rehearing deniedPTAB · Apr 21, 2020 · IPR2020-00014 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and maintained denial of institution for claims 1–6, 12, 13, and 15–18 because Vanguard did not show a sufficient, supported rationale to combine the prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify 1 US 2012/0019383 A1, filed July 20, 2010, published Jan. 26, 2012 (Ex. 1003). 2 US 5,317,305, filed Jan. 30, 1992, issued May 31, 1994 (Ex. 1006). specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Vanguard in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,008,082 - PTAB · Jan 21, 2020 · IPR2019-01091 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1, 13, 25-27, 29, 30, 32, 34-36, and 166, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner entities in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“argument because it is a new argument presented for the first time in the Request for Rehearing. Although Petitioner entities affirmatively discuss the Rackspace IPR in the Petition, they only do so in the context of explaining that the Petition is not a follow-on petition to the petition filed in the Rackspace IPR because it involves a different petitioner, different claims, different asserted grounds of unpatentability, and different arguments and evidence. See Pet. 12–13. Indeed, Petitioner entities do not address squarely Francisco’s disclosure of periodically varying the algorithm in the Petition, much less take the position that periodically varying the algorithm is an “optional” feature. See generally Pet. Petitioner entities’ failure to address Francisco’s periodically varying algorithm was the reason for our concern with the Petition, especially given that Petitioner entities bear the burden to demonstrate unpatentability. See Dec. 24–25 (explaining that Petitioner entities “do[] not address Francisco’s disclosure of ‘periodically vary[ing]’ the algorithm . . . [which] is problematic as [Petitioner entities] bear[] the burden of demonstrating . . . unpatentability” (first alteration in original) (quoting Ex. 1003, 2:43)). We did, however, further explain that, even assuming that there may be an embodiment in Francisco in which the algorithm would not be varied (a fact that Petitioner entities did not establish), we would have still exercised our discretion to deny institution given the other shortcomings of the Petition. Id. at 25. Accordingly, our Decision Denying Institution did consider the possibility of embodiments where Francisco’s algorithm would not be varied, even though Petitioner entities did not address this issue squarely in the Petition itself.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“of the claim construction arguments presented by Petitioner entities with respect to the claim term “message digest function” included arguing that the specification of the ’420 patent does not define this claim term explicitly, but that the specification “generally describes it as ‘reduc[ing] a data block B of arbitrary length to a relatively small, fixed size identifier.” Dec. 11 (citing Paper 1 (“Pet.”) 40). Petitioner entities also argued that the specification cites well-known cryptographic hash functions as examples of a “message digest function”—namely, MD4, MD5, and Secure Hash Algorithm. Id. For purposes of claim construction, Petitioner entities did not rely on the two related, but different, patents previously challenged by Rackspace and Apple that include claims reciting the claim terms “message digest function or hash function”; nor do Petitioner entities predicate their claim construction arguments presented and developed in the Petition on the positions taken by PersonalWeb in those three cases. See generally Pet. Notably, Petitioner entities do not even allege in the Request for Rehearing that our construction of the claim terms “message digest function or hash function” is incorrect. In any event, Petitioner entities do not direct us to, nor are we aware of, controlling precedent that prevents PersonalWeb from raising a claim construction argument with respect to the claim terms “message digest function or hash function” that appear in independent claim 25 of the ’420 patent merely because PersonalWeb chose not to raise the same claim construction argument when responding to previous challenges of two related, but different, patents. The cases relied on by Petitioner entities to support their new argument are distinguishable from the circumstances presented here. See Req. Reh’g 3. The Google case involved an inter partes review in which a Board panel ultimately adopted previous district court” slip op. at 5
- BurdenDecided for patent owner
“argument presented by Petitioner entities because they only presented and developed this argument in the context of addressing claim 29, which depends from independent claim 25 and further recites “wherein the first content-dependent name for the particular sequence of bits comprises a digital fingerprint of the particular sequence of bits.” See Pet. 45–47. In essence, Petitioner entities request that we search through the entire Petition to find support for their theory that Francisco discloses the “message digest function or a hash function” recited in independent claim 25 because it would have been obvious to a person of ordinary skill in the art to implement Francisco’s system using a more complex hashing algorithm. If Petitioner entities desired for us to consider one portion of the Petition as supporting arguments presented and developed in another portion of the Petition, they should have provided citations to those portions with particularity. Moreover, the obviousness argument that Petitioner entities present with respect to dependent claim 29 appears to be setting forth an alternative ground based on proposed modifications to Francisco in view of the admitted prior art of the ’420 patent and secondary references. See Pet. 45– 47 (arguing that “Francisco meets th[e] limitation” of dependent claim 29, but further arguing that it would have been obvious to implement a more complex algorithm in Francisco because the ’420 patent “acknowledges that the MD5 hash algorithm . . . is prior art” and relying on Exhibit 1009 (Langer) and Exhibit 1010 (Browne) for teachings regarding MD5). The only statutory ground the Petition identifies under 37 C.F.R. § 42.104(b)(2) is obviousness under 35 U.S.C. § 103(a) in view of the combined teachings of Wyman and Francisco. See id. at 5. The Request for Rehearing does not explain why one of ordinary skill in the art would have understood the MD5 algorithm to be taught or suggested by the teachings of Wyman or Francisco, as opposed to substituting the MD5 algorithm taught in alleged admitted prior art or secondary references for Francisco’s algorithm. Stated differently, the Request for Rehearing does not suggest that we should have granted institution on any grounds other than under § 103(a) in view of the combined teachings of Wyman and Francisco. Accordingly, Petitioner entities have not persuaded us to modify the Decision Denying Institution with respect to claims 25 or 29.” slip op. at 8
Claim constructionPatents in suitUS 8,099,420 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - Broadcom Ltd. / Broadcom Corp. et al. v. Invensas Corp.Rehearing deniedPTAB · May 3, 2017 · IPR2017-00107 · APJ Kamran Jivani · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 16–20 and 22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Takahashi’s Figure 4B and Kishii’s Figure 4B each allegedly disclose the Dimensional Limitation. Reh’g Req. 10. Petitioner asserts, “the Board did not dispute the Petitioner’s factual analysis of what these prior art figures show; the Board only disputed the scope of what is being claimed in the Dimensional Limitation.” Id. Petitioner misapprehends our Decision. We found therein: “Petitioner fails to identify passages of Takahashi’s specification describing the proportions of Figure 4B in sufficient detail so as to anticipate the Dimensional Limitation.” Dec. on Inst. 9. We similarly found: “Petitioner fails to identify passages of Kishii’s specification describing the proportions of Figures 4B and 4C in sufficient detail so as to teach or suggest the Dimensional Limitation.” Id. at 10. Thus, contrary to Petitioner’s argument, we addressed Petitioner’s reliance on Takahashi’s Figure 4B and Kishii’s Figure 4B and found this reliance insufficient to carry Petitioner’s burden of showing a reasonable likelihood it would prevail on its asserted anticipation and obviousness grounds. Id. at 8–10.” slip op. at 4
NonePatents in suitUS 6,849,946
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.