- PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms.6 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,863,573 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” 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 would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Nov 22, 2024 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–12, finding a reasonable likelihood that claims 1–4 and 9 are anticipated by Winkler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized 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. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’017 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in electrical engineering or a similar field and at least two years of experience working with electrical circuits or electrical connectors, including power connectors. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 19 (citing Ex. 1003 ¶¶ 24–26). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 7. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’017 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this juncture, we preliminarily agree with Patent Owner’s proffered claim construction. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)). Although “a patent’s written description can set forth more than one definition of a claim term,” we do not discern that to be the case here. See Pitney Bowes, 182 F.3d at 1310. The portions of the Specification of the ’017 patent that Patent Owner cites use “insulating” and its associated tenses to mean suppressing electrical arcing and protecting from electrical burns, i.e., electrically insulating. See, e.g., Ex. 1001, code (57), 1:58–2:3, 2:42–44, 3:2–6, 3:30–40, 3:63–4:10, cited in Prelim. Resp. 12–14. Accordingly, for purposes of this Decision, we interpret “insulating” as recited in the claims to mean “electrically insulating.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s reliance on the modified Figure 2 diagram not explicitly shown in Winkler is not per se improper, so long as the skilled artisan would have reasonably understood that that is what Winkler discloses. See Acoustic Tech., Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference. . . . Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” (citations omitted)). Dr. Eldering testifies that the diagram was “created based on FIG. 2 of Winkler and developed by taking the components of each half of the connector and recreating them in a separated state.” Ex. 1003 ¶ 80. On the current record, Patent Owner does not dispute Dr. Eldering’s testimony or that Petitioner’s diagram reflects what the skilled artisan would have reasonably understood by looking at Figure 2 of Winkler. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,808,017 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Oct 4, 2024 · IPR2024-00761 · APJ Donald E Daybell · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’684 Patent. The Petition is granted, and inter partes review is instituted. A scheduling order will follow this decision.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’684 Patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials.” Pet. 5. Patent Owner “generally agrees” with this definition. Prelim. Resp. 26. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’684 Patent was filed before March 16, 2013 (the effective date of the relevant amendments), the pre-AIA versions of §§ 102 and 103 apply. 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that the above noted evidence comprises “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 [Wang] qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13. Patent Owner raises a number of questions about Petitioner’s showing. First, Patent Owner contends that the Morris Declaration “is not credible or legally sufficient for various reasons,” including a lack of corroborating evidence. Prelim. Resp. 28–30 (citing, inter alia, Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)). Nonetheless, Ms. Morris’s testimony at least is consistent with the indicators of publication appearing in the front matter of Wang. See Ex. 1005, 1, 3–6 (added page numbers). As such, we find Ms. Morris’s testimony sufficiently reliable to support a reasonable likelihood that Wang would qualify as a prior art printed publication. At trial, the parties can develop the record about whether, and, if so, the extent to which, testimony regarding publication by a non-inventor witness must be corroborated with other evidence.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“f) Enablement of Wang In order for a prior art reference to anticipate a claim, that reference must enable a person of ordinary skill in the art to make the claimed subject matter. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (“To anticipate a claim, a reference must disclose every element of the challenged claim and enable one skilled in the art to make the anticipating subject matter.”) Enablement of a prior art reference does not require that the prior art reference show that the disclosed subject matter would have utility; that is, that it would work for any particular purpose. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005). (“[T]his court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102.”), In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (“[I]t is beyond argument that no utility need be disclosed for a reference to be anticipatory.”) All that matters is whether the skilled person could have made the claimed subject matter, without undue experimentation. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) (“Enablement of prior art requires that the reference teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention.”) (emphasis added). Even references that disclose inoperative devices are still prior art for all that they teach. Id. (citing Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)). Therefore, questions of whether the prior art may teach away from making the claimed subject matter are not relevant to anticipation. Bristol-Myers Squibb Co. v. Ben Venue Lab’ys, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (“Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”)” slip op. at 23
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,487,684 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “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.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00117 · APJ Elizabeth M Roesel · IPR · Institution
Instituted IPR on claims 1–13 on all petitioned grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including anticipation of claim 1 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’836 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“A reference qualifies as a printed publication only if it was publicly accessible before the effective filing date of the challenged patent. 35 U.S.C. § 102(a)(1); M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., 985 F.3d 1376, 1379 (Fed. Cir. 2021). Public accessibility “has been called the touch-stone” in determining whether a reference qualifies as a printed publication. M & K Holdings, 985 F.3d at 1379 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quotes and citations omitted).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Independent Claim 1 a. Preamble Petitioner contends that Nguyen discloses the claim 1 preamble, which recites “an adapter for mating with optical fiber connectors.” Ex. 1001, 18:12. Pet. 32–33 (citing Ex. 1005 ¶¶ 26–30, Figs. 1, 2). We find that Petitioner’s contention for the claim 1 preamble is adequate for purposes of institution.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine Petitioner contends that it would have been obvious to modify Nguyen’s adapter in two ways. Pet. 54. First, Petitioner asserts it would have been obvious to include “optical-fiber connectors that employ handles configured to remotely release connectors from the adapter” by replacing Nguyen’s connectors with Lee’s connectors. Pet. 54–56 (citing Ex. 1003 ¶¶ 289–295). Second, Petitioner asserts it would have been obvious to include “a transverse wall that includes slots halfway between two ends of the adapter and sleeve holders that employ sockets to mate with cylindrically-shaped ferrules” by replacing Nguyen’s wall with Lee’s sleeve holders. Pet. 54, 56 (citing Ex. 1003 ¶¶ 296–302). Petitioner provides several reasons for the first modification, including a desire for convenience, tightly packed fiber optic ferrules, ease of maintenance, and scalability. Pet. 54 (citing Ex. 1003 ¶¶ 289–290). According to Petitioner, these goals would be served because “Lee’s handle allows a user to disengage the latch arm further from the adapter” whereas “[t]he latch arms of Nguyen require a user to be closer to the adapter.” Id. (citing Ex. 1003 ¶ 289). Petitioner also provides reasons for the second modification, asserting that “Lee’s sleeve holders are easy to maintain because they are removable, able to snap into place, and coordinate with dust caps to maintain cleanliness, as opposed to Nguyen’s immobile wall.” Pet. 56 (citing Ex. 1003 ¶ 297). According to Petitioner, “a POSITA would have been motivated to modify Nguyen’s adapter to incorporate Lee’s sleeve holders and slots to provide a system that is easier to maintain.” Id. (citing Ex. 1003 ¶¶ 298–299). We find that Petitioner’s asserted rationale for modifying Nguyen in view of Lee is adequate for purposes of institution.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,333,836 - PTAB · Jul 9, 2024 · IPR2024-00116 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted review of claims 22–40 on all petition grounds after finding a reasonable likelihood that US Conec would prevail on at least one claim, including anticipation of claim 23 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’369 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1 Petitioner states that “if instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 102. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), at 3–4, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to section II.A).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 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. See Phillips, 415 F.3d at 1313–14. “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)).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having: (1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree.” slip op. at 6
Claim construction§ 102 anticipationDiscretionary denialcites GrahamPatents in suitUS 11,307,369
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.