- Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Institution deniedPTAB · Dec 3, 2025 · PGR2025-00056 · APJ Steven M Amundson · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, and for the reasons explained below, we determine that Petitioner has failed to demonstrate that it is “more likely than not” that at least one of the claims challenged in the Petition is unpatentable. Hence, we deny the Petition and do not institute a post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 10 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 39. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 22. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’149 patent as well as the asserted references. See, e.g., Ex. 1005, 1:35–6:56, 42:44–46:28, code (57); infra §§ III.E.1–III.E.2, III.G.1–III.G.2, III.H.1.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post-grant review. As Petitioner recognizes, the ’149 patent defines many of the claim terms Petitioner discusses in the “Claim Interpretation” section of the Petition. See Pet. 14–16. For instance, the patent defines “antenna rectangle” as “the orthogonal projection of the antenna box along the normal to the face with largest area of the antenna box.” Ex. 1005, 14:21–24. Further, the patent defines “complexity factor F21” and “complexity factor F32” consistent with the independent claims. See id. at 17:16–21, 17:49–61, 18:8–18, 19:12–25, 20:5–17, 42:62–43:25, 44:5–30, 45:8–46:3. E. Alleged Obviousness over Dou and Ciais-Multiband: Claims 7–9, 11–14, 16, 17, 19, and 20 Petitioner contends that claims 7–9, 11–14, 16, 17, 19, and 20 are” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain why an ordinarily skilled artisan who used Ciais-Quadband’s antenna for Dou’s two antennas 206 and 208 would have departed from the commonly accepted rule of thumb and Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency to the extent needed to implement the proposed combination, i.e., with only about 55% of the preferred spacing between antennas. See Pet. 60–69; Ex. 1007 ¶¶ 172–187. Hence, based on the current record, Petitioner does not establish sufficiently for purposes of institution that an ordinarily skilled artisan would have been motivated to combine Ciais-Quadband’s teachings with Dou’s teachings in the way Petitioner proposes. Further, the addition of two Nakano InvFL antennas extending from the ground plane both above and below the PCB does not remedy the insufficient spacing between “the swapped-in Ciais-Quadband antennas.” Ex. 2010 ¶ 67.” slip op. at 69
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,095,149 - Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01480 · APJ Sharon Fenick · IPR · Institution
The Board denied institution under § 314(a), citing the Fintiv factors, including the earlier trial date and the petition’s not particularly strong merits, for claims 1–3, 10–13, 17, and 20–22.
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. 4, 8 (quoting Ex. 2001, 5). 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 projects a trial date of July 2025, earlier than the actual date set by the district court. Ex. 2001; Ex. 2007; Prelim. Resp. 8–9. The fact that the time-to-trial statistic is earlier than the scheduled trial date confirms that the scheduled trial date is credible and should be given weight. From this evidence, we are persuaded that we should rely on the scheduled 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. C.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“1. Analysis of Petitioner’s Challenges a) Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces. Additional education can substitute for less work experience, and vice versa. Pet. 14; see Ex. 1003 ¶ 41. Patent Owner does not dispute or comment on this proposal or propose an alternate level of ordinary skill in the art. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the evidence of record, including the asserted prior art and ’103 patent.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same standard used in district courts, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither Petitioner nor Patent Owner asserts that any claim term requires claim construction (Pet. 14–15; Prelim. Resp.) and we do not discern that any claim term requires construction to arrive at our conclusions herein. c)” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Conclusion Regarding the Merits The discussion above identifies weaknesses in the Petition that we have considered in our evaluation of Fintiv factors. While we do not make a determination regarding whether the Petition shows that there is a reasonable likelihood of prevailing were we to institute, for the reasons given, we determine that this Petition does not present particularly strong merits. G. Weighing the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 22
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,852,103 - HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 16, 2025 · IPR2024-01429 · APJ Karl D Easthom · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on the Fintiv factors, especially the earlier district court trial date and weaknesses in the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)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. 17. 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 projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2002; Ex. 2008; Prelim. Resp. 17–18. 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. C.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75 of the ’307 patent. V. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties each raise facially valid points based on the claim language. Petitioner has the burden to show “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104 b(3). Petitioner does not explain how, under its broad construction, the decoder “decodes the encoded data to recover application and control bits in accordance with a line code.” That is, if the encoding does not encode both “application and control bits,” then how can decoding “recover” both under Petitioner’s claim construction? It is not clear on this preliminary record whether the specification supports Petitioner’s broad claim construction. For this reason, Petitioner’s showing based upon the broad claim construction outlined above is not “particularly strong.” See Fintiv at 14–15. As discussed further below, Petitioner also presents a showing under Patent Owner’s more narrow construction. 3.” slip op. at 15
- Skill levelSkill level board ownOther
“Prelim. Resp. 6 (citing Ex. 2001 ¶ 15). Relying on its declarant, Dr. Wolfe, Petitioner proposes materially the same level. Pet. 5 (citing Ex. 1003 ¶¶ 26– 29). Based on a review of the record, we adopt the parties’ proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’307 patent.” slip op. at 14
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,187,307 - Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01478 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPR challenging claims 1, 2, 3, 5, 7, and 9, exercising discretion under § 314(a) based on parallel litigation and the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv Order, at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims. III. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 3, 5, 7, and 9 of the ’712 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted” slip op. at 17
Discretionary denialPatents in suitUS 8,680,712 - HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · 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 KSRPatents in suitUS 7,154,905 - Fortinet, Inc. v. Croga Innovations Ltd.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). 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 ’780 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,601,780 - PTAB · Dec 16, 2024 · IPR2024-00997 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–10, exercising its discretion under § 314(a) because the Fintiv factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution 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” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in design, development, and/or testing of cellular networks.” Pet. 15–16 (citing Ex. 1003 ¶¶ 43–44). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties argue that we need not address any claim-construction issues for our analysis, and we agree. See Pet. 15; Prelim. Resp. 25. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,798,754 - PTAB · Dec 16, 2024 · IPR2024-00992 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution on claims 1–4, 6–9, 11–14, 16–19, and 21–23 under Fintiv because the parallel trial was likely to precede the final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“that “[t]he Board should deny institution under 35 U.S.C. § 314(a) because all six Fintiv factors favor discretionary denial.” Prelim. Resp. 70–71 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). For the reasons below, we agree with Patent Owner, and we disagree with Petitioner that the Petition presents a compelling, meritorious challenge.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in research, design, development, and/or testing of cellular networks.” Pet. 12 (citing Ex. 1003 ¶¶ 44–45). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 16
- BurdenNot reached
“Although we need not decide which side would likely prevail on these issues, Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. The ground based on Nogami does not simply rely on Nogami’s plain disclosure, but also relies on expert testimony as to how a person of ordinary skill in the art would have understood Nogami’s disclosure based on the background knowledge in the art. Thus, Petitioner has not, on the preliminary record, presented a compelling meritorious challenge to claim 1 and its related claims.” slip op. at 19
Discretionary denialcites Phillips · GrahamPatents in suitUS 10,951,359 - Uber Technologies, Inc. v. Enovsys, LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,441,752 - Nearmap US, Inc. v. Pictometry International Corp.Institution deniedPTAB · Oct 10, 2024 · IPR2024-00729 · APJ Russell E Cass · IPR · Institution
The Board denied institution on all grounds because the Petition did not sufficiently explain how the asserted references teach claim 1’s control data limitation or establish unpatentability of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The question before us is not whether we could come up with a way to understand how the asserted prior art could render the challenged claims unpatentable, but rather did Petitioner provide the arguments and evidence to show that the challenged claims are unpatentable. Here, Petitioner has not met that burden and as such, Petitioner has not shown by a reasonable likelihood that any of the challenged claims are unpatentable.” slip op. at 22
- BurdenDenied
“contentions with sufficient particularity. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”). We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the Petition fails to sufficiently explain how the combination of Loewen and Fujimoto teaches the “control data” in Petitioner’s proposed construction. Neither Petitioner’s claim chart for limitation [1.f] nor the other portions of the Petition identified in Petitioner’s Reply identify what disclosure in Loewen or Fujimoto corresponds to this “control data,” or why this “control data” would be inherent in the disclosures of those references. Additionally, as discussed above, to the extent Petitioner is relying on Dr. Forsyth’s Declaration to provide argument not set forth in the Petition, such reliance would be an improper incorporation by reference. And, in any event, Dr. Forsyth also does not identify with specificity what disclosures of Loewen or Fujimoto correspond to the “control data” in Petitioner’s proposed construction. Finally, Petitioner’s Reply does not explain how Loewen’s disclosure that the computer “triggers” the still cameras to capture images involves “control data,” or why one of ordinary skill would understand that “control data” is necessarily sent as part of this “triggering.” Consequently, we determine that Petitioner has failed to sufficiently show that the combination of Loewen and Fujimoto teaches element [1.f], and thus has failed to establish a reasonable likelihood that claim 1 is unpatentable over this combination. Because Petitioner’s other grounds are all directed to claims that depend from claim 1, Petitioner has failed to sufficiently show unpatentability of those claims as well.” slip op. at 25
§ 103 obviousnesscites KSRPatents in suitUS 9,182,657
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.