- 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 - PTAB · Jan 24, 2025 · IPR2024-01145 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 7–11 were unpatentable on any of four proposed grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying upon the testimony of its declarant Dr. Christopher Hansen, Petitioner argues the following: As of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’559 Patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In addition to the above information, it would be beneficial for the macro eNB to send a measurement gap configuration (as dis-cussed in 3GPP TS 36.331 V1.1.2.0) allocated for the UE to the Small cell eNB so that the Small cell eNB could take measure-ment gaps into consideration when scheduling resources to the UE. For example, the small cell eNB could avoid scheduling the UE during measurement gaps because the UE cannot transmit or receive any signal to/from the Small cell during the measurement gaps. Ex. 1001, 6:41–49 (emphasis added). We particularly note the literal written description support (in italics) in the ’559 Patent that mirrors the claim [1e] language: “so that the Small cell eNB could take measurement gaps into consideration when scheduling resources to the UE.” Id. at 6:45–46 (emphasis added). Moreover, as noted above, Figure 5 of the ’559 Patent depicts flow chart 500. Prelim. Resp. 3–4 (citing Ex. 1001, 6:65–7:3). And step 525 of Figure 5 affirmatively describes: “The second eNB receives the measurement gap configuration from the first eNB, and takes the measurement gap configuration into consideration when scheduling resources to the UE.” Id. at Fig. 5, step 525 (emphasis added).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“cites to Advanced Display Systems Inc. v. Kent State University (212 F.3d 1272, 1281–1282 (Fed. Cir. 2000)), which sets forth the doctrine of incorporation by reference that provides a mechanism to include as a matter of law in one document the disclosure of another document. As explained by the court in Advanced Display Systems, the requirements for an effective incorporation by reference are as follows: To incorporate material by reference, the host document must identify with detailed particularity what specific material it in-corporates and clearly indicate where that material is found in the 10 We note Exhibit 1014 is the Declaration of Craig Bishop, a second declaration relied upon by Petitioner, that is generally directed to the nature, purpose, dates, and public accessibility of the 3GPP TS.331 Exhibits 1008, 1009, and 1015. See e.g., Ex. 1014 ¶¶ 65–67. This is in addition to Exhibit 1003, which is the Declaration of Dr. Hansen, for Petitioner. We have considered both declarations, to the extent relied upon by Petitioner. USPQ 144, 146 (CCPA 1973) (providing that incorporation by reference requires a statement “clearly identifying the subject matter which is incorporated and where it is to be found”); In re Saunders, . . . 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation is ap-propriate only if one reference “expressly incorporates a particu-lar part” of another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to material in an earlier ap-plication in order [to] have that material considered part of a later application). Advanced Display Systems, 212 F.3d at 1281–1282 (emphasis added). Here, we find Petitioner has not persuasively shown how Centonza expressly incorporates a particular part of the TS 36.331 reference by: (1) identifying with detailed particularity what specific material it incorporates, and (2) clearly indicating where that material is found in the TS 36.331 document. Pet. 33; Exhibits 1008, 1009.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,560,559 - PTAB · Oct 11, 2024 · IPR2024-00730 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 4, 5, 10, and 11 were anticipated or obvious over Lee or Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“capability to include one or both first CBs and second CBs within any one of the CBGs. Prelim. Resp. 9–10. The plain and ordinary meaning of the CB/CBG limitation, however, does not provide such a requirement. Instead, the plain and ordinary meaning of “each of the multiple CBs is included in any one of the multiple CBGs” simply requires that at least one CBG contain each CB. Although the description in the Specification of the configuration example of Figure 11(c) arguably describes the capacity of a system to include the first and second CBs in any one of CBGs, the Specification’s permissive language does not appear in the challenged claims. That description reads:” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“multiple CB/CBG limitation, we nevertheless find it necessary to construe the limitation. Upon review of the record, we construe the limitation as requiring that at least one CBG includes each of the multiple CBs. The plain meaning of “each of the multiple CBs is included in any one of the multiple CBGs” is that each CB is included in a CBG, which means that at least one CBG includes each of the multiple CBs. Further, the Specification supports construing the limitation to have this plain meaning. Figure 11 of the ’509 patent, shown below, provides a configuration example of CBGs (Ex. 1001, 23:7–8):” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“multiple CB/CBG limitation, we nevertheless find it necessary to construe the limitation. Upon review of the record, we construe the limitation as requiring that at least one CBG includes each of the multiple CBs. The plain meaning of “each of the multiple CBs is included in any one of the multiple CBGs” is that each CB is included in a CBG, which means that at least one CBG includes each of the multiple CBs. Further, the Specification supports construing the limitation to have this plain meaning. Figure 11 of the ’509 patent, shown below, provides a configuration example of CBGs (Ex. 1001, 23:7–8):” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,196,509 - PTAB · Oct 10, 2024 · IPR2024-00644 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 5, 7, and 8 were unpatentable over R2-1702708, which was not shown to be a prior-art printed publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). If the petition relies on an alleged printed publication, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 9
§ 102 anticipationPatents in suitUS 11,134,400 - ROKU, Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01258 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that Alger anticipated claims 184, 185, and 188–190 or that Alger-based combinations rendered claims 186, 187, 189, 191, and 192 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Parallel petitionsNot reached
“1 Roku also filed a Notice Ranking Petitions, arguing that we should institute trial both in this proceeding and in IPR2021-01257 where Roku challenges the same claims of the ’819 patent on different grounds. Paper 3; see also Paper 8 (IOENGINE’s response). Because we deny institution on the merits, we need not address whether it would be appropriate to institute trial in both proceedings.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 21–22 (citing Ex. 1103 ¶¶ 54–58). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1103 ¶¶ 54–58). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 8. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1101, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 13. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 14. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1101, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,447,819 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · Feb 7, 2023 · IPR2022-01257 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that Ozawa or Clanton disclosed the claimed terminal, and the dependent-claim obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Lippman’s testimony, Roku argues that a person of ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 24–25 (citing Ex. 1003 ¶ 55). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1003 ¶ 55). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 15–16. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“terminal is key to our decision in this proceeding whether to institute trial, so we need to construe the term more specifically than the district court did. Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 20. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 21. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1001, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis To show anticipation, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,447,819 - Google LLC v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 19, 2022 · IPR2022-01073 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on all challenged claims because Teodosiu did not disclose the claimed location identifier, and the proposed combinations did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 19–21 (claim 30), 44–45 (claim 46), 56 (claim 62). Petitioner relies on its showing as to this limitation of claim 30 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“and 93 of the Mir Declaration. See Pet. 19–20 (citing Ex. 1002 ¶¶ 87–89, 93). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving an access code request message including “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 87. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that “Teodosiu’s method includes a network server receiving from the mobile device (‘mobile telephone’) a request (‘access code request message’) including a selected contact (‘callee identifier’) and mobile device 110 phone number, which includes geographic information (‘location identifier’).” Id. ¶ 89. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that it is not necessary to expressly interpret any claim language in order to decide whether to institute review. B. Legal Standards” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,630,234 - Google LLC v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,880,721 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Jan 27, 2022 · IPR2021-01328 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Forescout did not show Thomas was prior art, so it did not show a reasonable likelihood that any challenged claim was obvious over Thomas or Thomas and Gill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Fortinet that Forescout has not met its burden to particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under § 103 for obviousness “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103 (2018). As discussed above, we determine that Forescout has not adequately shown that Thomas is prior art to the challenged claims. For the same reason, Forescout has also failed to adequately show that in light of Thomas alone or in combination with Gill, the claimed inventions would have been obvious to a person of ordinary skill in the art prior to March 17, 2014, the effective filing date of the ’421 patent. See supra part III.B. Thus, we determine that Forescout has not shown that there is a reasonable likelihood that it would prevail in proving that any of the challenged claims would have been obvious over either Thomas alone or Thomas in view of Gill.” slip op. at 10
§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,503,421
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.