• US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing granted
  PTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing

  The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2

  None
  Patents in suitUS 11,061,190
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.

  RulingsInstitution decision

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

    “A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10

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

    “C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim 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). Under that standard, we generally give claim terms 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. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst-case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,135,682
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Aug 26, 2024 · IPR2024-00578 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, and 9 were obvious.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we deny institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends as follows: The ’826 Patent describes and claims aspects and functionality of cable and satellite television signal processing and communication systems. As of the alleged September 8, 2011 priority date, a person of ordinary skill in the art (“POSITA”) of the ’826 Patent would have had at least: i) a Bachelor of Science in electrical engineering or an equivalent subject and three or more years of experience working in the field of cable and/or satellite signal processing and communication systems; ii) a Master’s in electrical engineering or an equivalent subject and one or more years of experience working in the field of cable and/or satellite television signal processing and communication systems; or iii) a Ph.D. in electrical engineering or an equivalent subject and at least some experience working in the field of cable and/or satellite television signal processing and/or communication systems. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 9 (citing Ex. 1003 ¶¶ 30–31) (internal citation omitted). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 8

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

    “The parties indicate that the district court in the Charter case (2:22-cv-00125) construed “network management messages” in the claims of the ’826 patent to mean “messages which report on the network based on the measured characteristics.” Pet. 10 (citing Ex. 1009, 29); Prelim. Resp. 10. Petitioner contends this construction is consistent with the ordinary and customary meaning of the claim language. Pet. 25. Patent Owner asserts that, in the Cox case (2:23-cv-01049), the parties agreed that “network management messages” should be given its plain and ordinary meaning. Prelim. Resp. 10 (citing Ex. 2001, 2). Patent Owner asserts that its arguments “do not turn on the construction of ‘network management messages’ so there is no need to construe that, or any other, term of the ’826 Patent claims at this stage of the proceeding.” Id. As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10

  • BurdenNot shown unpatentable

    “While Petitioner mentions portions of Renken that it considers relevant to limitation 1h, Petitioner does not explain how it reads each aspect of limitation 1h on Renken. For example, Petitioner does not identify what in Renken corresponds to the “network management messages,” what corresponds to the “measured characteristic of the received signal” that “is different than said network management messages,” and what discloses that the “measured characteristic” is the basis for “controlling transmission of the network management messages” from the “receiver” “back to the headend.” b) Conclusion for Claim 1 Accordingly, Petitioner has not shown a reasonable likelihood to prevail in demonstrating that Renken in view of the general knowledge of a POSITA discloses limitations 1a and 1h of claim 1.7 Thus, we do not reach the parties’ contentions concerning other claim limitations or Renken’s priority date.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 9,825,826
• Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution denied
  PTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11

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

    “Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. 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 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,265,096
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution denied
  PTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner

    “Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. 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 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,554,196
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution denied
  PTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “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); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,099,383
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution

  The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , 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 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13

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

    “We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,409,869
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00732 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).8 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’932 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “reasonable likelihood that Li was publicly accessible before the priority date of the ’932 patent. In particular, we determine that Petitioner has not shown a reasonable likelihood that Li “has been disseminated” or that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI, 511 F.3d at 1194. As an initial matter, Li is undated. We can find no indication anywhere in Li itself evidencing a timeframe in which it might have been published, not even a copyright date. There is also no indication in Li of any journal or website where Li may have been published. Dr. Hall-Ellis testifies that Li “appears beginning on page 12” of, purportedly, a record of the 12th International Conference on Telecommunication Systems: Modeling and Analysis, but the copy of Li submitted by Petitioner starts on page “1” and includes no further pages describing any conference. See Ex. 1009 ¶ 40; Ex. 1005, 1. Ultimately, there is nothing in the text of Li itself to distinguish Li from a draft paper that was never published. Petitioner submits no evidence that Li was disseminated at or around the time of the 12th International Conference on Telecommunication Systems: Modeling and Analysis. See Medtronic, 891 F.3d at 1381. Dr. Hall-Ellis testifies that Li was “presented” at the conference but submits no evidence in support of this assertion. Ex. 1009 ¶ 43. For example, Dr. Hall-Ellis does not address “whether the copies were freely distributed to interested members of the public” or whether there was a “legal obligation of confidentiality” when distributing any copies, among other factors. See Medtronic, 891 F.3d at 1381. Absent any such evidence, we conclude that Petitioner has not shown dissemination of Li at or around the time of the conference, or at any other time before the ’932 patent’s asserted priority date. Petitioner also does not sufficiently establish that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI Int’l, 511 F.3d at 1194. Dr. Hall-Ellis’s testimony is deficient because her testimony does not establish that Li was likely made available to the public before the critical date of the challenged patent. See Hulu, Paper 29 at 16. For example, Dr. Hall-Ellis does not claim personal knowledge of when Li was first published, was unclear as to when she obtained Li from the OPERA digital repository, and unpersuasively asserts that Li “is” available from other digital repositories. See Prelim. Resp. 32–33; Ex. 1009 ¶¶ 40–41. Whether Li “is” available online now does not establish that Li was publicly accessible in the relevant timeframe, i.e., 17 years earlier, prior to the April 20, 2006 priority date of the ’932 patent. Further, Dr. Hall-Ellis presents no persuasive evidence that the identified digital repositories hosted Li in the relevant timeframe. Patent Owner persuasively asserts that ResearchGate was established in 2008, after the priority date, and that Google Scholar’s page referencing Li links to ResearchGate. Prelim. Resp. 33–34 (citing Ex. 2014 (“We started ResearchGate in 2008 . . . .”); Ex. 1009 ¶ 41; see also id. n.23 (Google Scholar link, showing “[PDF] from researchgate.net”). Accordingly, these repositories do not support Dr. Hall-Ellis’s testimony that Li was publicly available in the relevant timeframe, before April 20, 2006. Dr. Hall-Ellis’s reliance on the CiteSeer repository is also unavailing because Dr. Hall- Ellis’s link to CiteSeer directly opens a PDF file of Li and does not provide any evidence showing that CiteSeer hosted Li in the relevant timeframe. See Ex. 1009 ¶ 41 n.24.” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,719,932
• Apple Inc. v. Mullen Industries LLCInstitution denied
  PTAB · Jul 3, 2023 · IPR2023-00149 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 45–78 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4 (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “We agree with Patent Owner that the information in the Petition fails to sufficiently demonstrate that Sheha discloses the subject matter of limitation 45(d). Specifically, we determine that Petitioner fails to demonstrate sufficiently for institution that Sheha’s remote server has the capability to have a wireless user request access rights for another user’s location after the system determines that the requesting wireless user does not have access rights to the target user’s location. We determine that Petitioner does not explain adequately how Sheha’s remote server has the 10 Limitation 45(b) recites “receiving a request for a location of said first wireless device from said second wireless device.” See Pet. 81. capability to allow a requester to request access rights after it determines that the requester does not have access rights, even if the remote server is capable of determining that the requester does not have such access rights.” slip op. at 19

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Mr. Williams’s testimony suffers from the same infirmities as Petitioner’s contentions. Mr. Williams’s testimony is the same as Petitioner’s contentions, and cites to the same section of Sheha. Ex. 1021-8 ¶ 193. Like Petitioner, however, Mr. Williams does not explain how this section supports a determination that Sheha’s system first determines if the requester has access rights, then, after determining that the requester does not have the rights, receives a request for the access rights. See id. To the extent that Petitioner relies on Mr. Williams’s testimony that a person having ordinary skill in the art would have understood “that the second device could make the request for location access rights as it has already made the request once,” we give this opinion little or no weight. Mr. Williams does not provide any support for this opinion. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art the time of the invention would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering[,] or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants as well as wireless positioning technologies such as GPS or triangulation. Pet. 6–7 (referencing Ex. 1021 ¶ 43). Petitioner also asserts “[a]dditional practical experience would substitute for lack of a formal degree.” Id. at 7 (referencing Ex. 1021 ¶ 44).” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,246,024
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc v. Power2b Inc.Institution denied
  PTAB · Mar 15, 2023 · IPR2022-01378 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 or 10 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). The rules governing this inter partes review require that “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under U.S.C. 112(f),” the Petition has to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). The Consolidated Trial Practice Guide8 states the following: Where claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). A party may choose to elaborate why § 112(f) should or should not apply to the limitation at issue. . . . A petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” slip op. at 11

  • BurdenInstitution denied meritsInstitution denied

    “be construed to cover the corresponding structure described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6. For each of these limitations, Petitioner was required, pursuant to 37 C.F.R. § 42.104(b)(3), to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Petitioner provides a section entitled “CLAIM CONSTRUCTION,” but does not identify any portions of the ’994 patent specification that describe the structure, material, or acts corresponding to each claimed function, even as an alternative construction. Pet. 7–13.” slip op. at 13

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

    “ascertain the “differences between the prior art and the claims at issue.” Graham, 383 U.S. at 17. In the context of claims that invoke 35 U.S.C. § 112 ¶ 6, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994). As discussed above in Section IV.C, the “sensing means” recitations in claims 1 and 5 presumptively invoke 35 U.S.C. § 112 ¶ 6 and Petitioner has not identified, in the specification of the ’994 patent, structure corresponding to the functions of the “sensing means” limitations. Because Petitioner has not identified structure corresponding to the functions recited in claims 1 and 5, we cannot ascertain the differences between the claimed invention and the asserted prior art, as required. Graham, 383 U.S. at 17. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing claims 1 and 5 are unpatentable under 35 U.S.C. § 103(a) as obvious over Bird and Ishii.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denialNot reached

    “II. DISCRETIONARY DENIAL Relying on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 18 (PTAB Sept. 6, 2017) (precedential as to Section II.B.4.i)), Patent Owner asserts we should exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review based on the instituted IPR2022-00334 proceeding. Prelim. Resp. 24–36. Patent Owner also argues that we should exercise our discretion and deny institution under 35 U.S.C. § 325(d). Id. at 44–46. We need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’994 patent.” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,816,994

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.