• Caption Health, Inc v. University Of British ColumbiaInstitution denied
  PTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 . . . 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.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10

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

    “The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,129,591
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied

    “partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9

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

    “E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15

  • Skill levelDecided for patent owner

    “Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,856,520
• Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies Inc.Institution denied
  PTAB · Apr 7, 2025 · IPR2024-01479 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution of IPR on claims 1, 4–5, 8, 11, and 14–16 based on Fintiv balancing, including the earlier district court trial date and weak merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 8. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2007; Prelim. Resp. 8; Reply 3. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot reached

    “First, Iwamoto’s “standby” mode is chosen specifically to avoid malfunction as explained above, and selecting a default mode of operation that bypasses the standby mode would undermine the stated purpose of Iwamoto’s standby mode. See, e.g., Depuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of” slip op. at 14

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

    “c) Knight5 Knight describes power source negotiation in a power management system. Ex. 1007 ¶ 4. Knight discloses that if the internal battery or external power source has sufficient power, it can connect with another device as a power source, otherwise, it attempts to connect as a power sink. Id. ¶ 42. The Petition does not explain a reason to combine Knight’s power 5 U.S. Pat. Pub. No. US 2008/0028237 A1, filed July 26, 2006. (Exhibit 1007, “Knight”). or Hsieh. Pet. 60. Grounds based on Knight are unpersuasive for at least this reason.” slip op. at 15

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,232,265
• HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 7, 2025 · IPR2024-01428 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution on claims 1-3, 5, 7-10, 12, 14-17, 20-23, and 26 under its Fintiv analysis, finding the parallel trial date and other factors favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 46. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2001; Prelim. Resp. 46; Reply 5. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-atissue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6

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

    “Finally, Petitioner argues obviousness over each of Banes and Calvignac. These assertions of obviousness rely on testimony on the understanding of a person of ordinary skill in the art of the “spare” code and flags as “out-of-band symbols.” Pet. 20−21. Petitioner also argues that it was “well-known” to include in-band symbols in data packets and to include out-of-band symbols in control indicators to obtain the benefit of allowing data payload information to be readily distinguished from control information. Pet. 63−64. The testimony cited in support relies on the disclosure of Shin ’464 for this statement.5 Ex. 1003 ¶ 225. The exact same disclosure of an 8-bit encoding technique that uses in-band and out-of-band symbols within a transmission is found in another Shin patent that is incorporated by reference in the ’905 patent and has overlapping inventors. Ex. 1006, 9:60−10:8, Ex. 1008, 5:15−28, Ex. 1001, 24:50−55. In other words, the alleged benefit may be better characterized as part of the inventor team’s work rather than a technique “well-known” in the art. And for this reason, Petitioner’s obviousness contentions are less persuasive. 5 U.S. Patent No. 5,974,464, filed September 30, 1996. (Ex. 1006, “Shin ’464”).” slip op. at 15

  § 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 7,154,905
• Apple Inc. v. Haptic, Inc.Institution denied
  PTAB · Apr 4, 2025 · IPR2024-01476 · APJ Andreas Baltatzis · IPR · Institution

  The Board denied institution of review of claims 3, 6, 7, 12, and 13, exercising § 314(a) discretion under Fintiv after balancing the parallel litigation factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “prejudice to renewal if the PTAB institutes IPR review.” Ex. 2023, 6. A stay denial without prejudice to renew if a PTAB trial is instituted “usually weigh[s] against exercising authority to deny institution.” Fintiv, Paper 11 at 7. But “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay.” Id. Although the District Court denied a stay pending the Board’s decision, the court also identified the proximity of the trial date and litigation investment as significant factors in its initial denial of the requested stay. See Ex. 2023, 6. Thus the evidence is inconclusive as to whether or not the District Court would stay the case if we granted institution at this time. Absent a clear indication from the District Court, we decline to predict whether a stay would be granted.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther

    “a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 171 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 24, 33–36. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the housing so that it does not detect vibrations from outside the housing. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundOther

    “Likewise, we find a significant weakness in Petitioner’s argument for a reasonable expectation of success in the combination. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Claim 1 requires “said sensor being in a fixed position portion” that “set[s] a rigid position of said sensor relative to said mounting surface” (limitation 1e). As discussed above, neither Murakoshi nor Stewart appear to teach a sensor in a fixed position relative to said engagement means or a rigid position relative to said mounting portion. Accordingly, even if Murakoshi’s and Stewart’s teachings were to be combined, the combined teachings would not appear to meet the limitations of the claimed invention.” slip op. at 14

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,996,738
• Apple Inc. v. Haptic, Inc.Institution denied
  PTAB · Apr 4, 2025 · IPR2024-01475 · APJ Andreas Baltatzis · IPR · Institution

  The Board denied institution of IPR challenging claims 1, 2, 4, 5, and 8–11, exercising its discretion under § 314(a) based on the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Fintiv, Paper 11; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8

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

    “vibrations on a surface and using the vibrations to generate a control signal for a device. Ex. 1004 ¶¶ 21, 25, 29, 30, 36. To measure vibrations on a surface, Murakoshi’s sensor must be fixed within the housing and held in position relative to the surface. See Ex. 1003 ¶¶ 142 (“it is necessary to hold a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 174 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 23, 31–35. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14

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

    “We find Petitioner’s argument based on the combination of Li and iFixit to be a closer call than the argument based on Murakoshi and Stewart. However, because we exercise our discretion to deny the Petition in view of the parallel litigation, we need not determine whether Petitioner meets the standard for institution based on the combination of Li and iFixit.” slip op. at 17

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,996,738
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution denied
  PTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.

  RulingsInstitution decision

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

    “and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19

  • Parallel petitionsNot reached

    “patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other

    “Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,961,552
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution denied
  PTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,694,384
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic LimitedInstitution denied
  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 · Graham
  Patents in suitUS 7,664,059
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 9,237,489

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.