- PTAB · Jan 28, 2025 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims and all four grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We begin our analysis with independent claim 1. Considering these factors, we preliminarily determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable as obvious over Zhang, Fillebrown, and Pasanen, for the reasons explained below.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that limitation 1c is taught by the combination of Zhang with Fillebrown. Pet. 18. Petitioner identifies Zhang’s teaching of transmitting commands and media content from the mobile device to helper servers via a wireless network, WLAN. Pet. 16–18 (citing Ex. 1004, 3:25– 60, 4:1–8, 4:32–50, 7:1–14, 8:13–22; Ex. 1003 ¶¶ 103, 104, 114–118). Acknowledging that Zhang does not expressly teach an intermediate routing device, Petitioner identifies Fillebrown’s intermediate wireless router (wireless router 120) for providing network range extension by amplifying routed signals. Id. at 19–22 (citing Ex. 1005 ¶¶ 16, 34, 49, 51, 57, 61). Petitioner contends a POSITA would have been motivated to modify Zhang to route data via an intermediate wireless router pursuant to Fillebrown to provide network range extension, and that such a modification would have had a reasonable expectation of success because Zhang and Fillebrown teach the same network setup (i.e., WLAN using a wireless protocol/standard such as IEEE 802.11 or Home RF). Pet. 22–23 (citing Ex. 1003 ¶¶ 109–111)” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 4; see generally Prelim Resp. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We preliminarily disagree with Patent Owner. Although the claim lists step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Nothing in the express claim language precludes performing step 1d before step 1b, as in Zhang. For example, the claim does not contain temporal terms, like “then” or “next,” nor does the claim otherwise specify that step 1b must precede step 1d. Although Patent Owner points out that a term of step 1d (i.e., the one more available devices) derives antecedent basis from text in step 1b (i.e., one more available devices), this alone does not directly or implicitly require performing step 1b before step 1d. Prelim Resp. 6–7 (citing Ex. 1002, 240, ’648 patent prosecution history). Nor does the Specification require performing the step of identifying devices as available before the step of wirelessly signaling those devices or even that the steps be mutually exclusive. For example, there are no statements that this step order is important, nor disclaimer of any other order, nor any prosecution history indicating a surrender of any other order. Moreover, according to the Specification, announcer 30, which is the component that identifies devices as available prior to the wirelessly signaling, is only “preferably provided.” Ex. 1001, 7:28–31. Even assuming Patent Owner were correct that step 1b must precede step 1d, Patent Owner’s position that device(s) must be identified as available does not appear to be commensurate with the claims. According to its plain meaning, limitation 1b does not appear to require identifying devices as available; the claim merely requires identifying “available devices.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In other words, the claim does not appear to require identifying (i.e., determining) whether devices are available but merely requires identifying devices that happen to be available. According to our preliminary understanding, Zhang’s mobile device 1) discovers (identifies) connected available and unavailable helper servers, and then 2) sends (wirelessly signals) service requests to compatible available and unavailable helper servers. Ex. 1004, 3:44–4:8, 6:51–7:13. Thus, Zhang identifies and then wirelessly signals available devices (Zhang also identifies and then wirelessly signals unavailable devices). As such, we preliminary determine that Zhang meets the claim language “identifying one or more available devices” and “wirelessly signaling the one or more available devices.”” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,547,648 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Sep 4, 2024 · IPR2024-00419 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–26 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 14 are obvious over Baig, Banga507, Banga690, and McFarland.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny petition or due to the alleged lack of particularity in the Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“Consistent with the Board’s practice for handling parallel petitions, Petitioner filed a Petition Ranking (Paper 3, “Notice”). See Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019).2 In the Notice, Petitioner ranks this Petition first among the two petitions challenging the ’015 patent and the petition in IPR2024-00420 second. Notice 1. As is discussed in our separate decision in IPR2024-00420, entered concurrently, we have discretion to deny a parallel petition under 35 U.S.C. § 314(a). In view of Petitioner’s ranking and our assessment of the 1 Those ten additional petitions are the following: IPR2024-00413, IPR2024-00414, IPR2024-00415, IPR2024-00416, IPR2024-00417, IPR2024-00418, IPR2024-00421, IPR2024-00422, IPR2021-00423, and IPR2024-00424. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. issue in our institution decision in IPR2024-00420.” slip op. at 3
- Other 314aDecided for petitioner
“violate[s] the ‘particularity requirement of 35 U.S.C. § 312(A)(3).” Prelim. Resp. 8–13. Patent Owner cites the Petition’s eleven grounds based on nine “express” prior art references and 33 other “shadow”9 references and exhibits. Id. at 10–11. Patent Owner asserts that “it is unclear which references Petitioner intends to be (or not to be) part of each of the grounds in its Petition.” Id. at 12. Patent Owner complains about the length of the petition and accompanying declarations. Id. (“The Petition itself is seventynine pages long (13,850 words), and attaches fifty-six exhibits. One of those exhibits is a 349 page declaration from one of Petitioner’s experts.”) (citations omitted). Patent Owner cites the Board’s informative decision in Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 at 24 (PTAB Mar. 6, 2019). We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation 8 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 9 Patent Owner explains that these are exhibits “attached to the Petition and expressly cited and relied upon by Petitioner’s experts.” Prelim. Resp. 11. particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the Petition in this case could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“institution, Petitioner establishes sufficiently that the combination of Baig, Banga507, Banga690, and McFarland teaches or suggests each of the limitations recited in independent claim 1, and that it would have been obvious to combine the teachings of those references. See Pet. 9–38. Petitioner asserts that “[a person of ordinary skill] would have been motivated and would have found it obvious to incorporate these teachings of Banga507, Banga690, and McFarland in Baig’s system to select targeted advertisements for groups of users demonstrating a pattern of accessing the Internet from a shared AP (e.g., at a coffee shop every Sunday) based on the group members’ collective preferences because doing so would have allowed Baig’s modified system to advantageously improve the relevance of the targeted advertisements provided to the group members.” Id. at 12 (citing Ex. 1007 ¶ 39; Ex. 1015 ¶ 54; Lett Decl. ¶¶ 142–146). Petitioner presents an element-by element analysis supported by expert testimony. Id. at 15–30; Lett Decl. ¶¶ 151–237. At this stage, Patent Owner does not address the merits of Petitioner’s challenge.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,564,015 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01205 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Hain anticipates claims 1, 2, and 4 and the stated combinations render claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“While we acknowledge that Shaffer was before the Office, that alone is not sufficient to meet the first prong of the Advanced Bionics test. Factor (b) under Becton, Dickinson, which is also considered under the first prong of Advanced Bionics, examines “the cumulative nature of the asserted art and the prior art evaluated during examination.” Advanced Bionics, Paper 6 at 9 n.10. We note that there is no evidence or argument that Hain or Sørensen were previously considered by the Office or cumulative of art that was in front of the Office. Although one reference, Shaffer, was previously presented to the Office, in each asserted ground, Petitioner relies on either Hain or Hain in combination with Sørensen. Because neither of those references was before the office, Patent Owner has not satisfied the first prong of the Advanced Bionics test.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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 in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“All of these arguments center on the claim language’s recitation of “one or more of the wireless earpieces.” Id. at 16. Patent Owner agrees with Petitioner that “[i]f both hearing aids detect a magnetic field, such as by being located in the disclosed storage box, the hearing aids are automatically switched off.” Id. at 17; see also Ex. 1004 ¶ 13 (“[I]f both hearing aids detect a relatively strong magnetic field in their immediate vicinity, then this is an indication that the hearing aids are located in the storage box and can be switched off.”). Patent Owner does not appear to dispute that Hain teaches a high power mode when both earpieces do not detect a magnetic field. See Prelim. Resp. 17; see also Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”). On the current record, we are thus persuaded that Hain discloses a low power mode when both earpieces detect a magnetic field and a high power mode when both earpieces do not detect a magnetic field. The parties’ dispute centers on the mixed situation when one earpiece detects a magnetic field and one does not. Patent Owner directs us to Hain’s disclosure of a “telephone mode” when “there is a magnetic field applied to one hearing aid but not the other, such as by a telephone receiver emitting a magnetic field.” Prelim. Resp. 16. According to Patent Owner, in order “[t]o anticipate the claims, Hain must disclose an earpiece that switches to a high power mode when only it – and not both it and its pair – no longer detects a magnetic field.” Id. at 17. Patent Owner, however, also asserts that “to anticipate the claims, Hain must disclose an earpiece that switches to a low power mode when only it – and not its pair – detects a magnetic field.” Id. at 21. Thus, we understand Patent Owner to be arguing that each earpiece must independently move to a high or low power state based on whether it detects a magnetic field. We, however, are not persuaded that the claim language is so limited. Limitation 1B recites “powering circuitry of the wireless earpieces utilizing a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Limitation 1C recites “altering the power sent to the circuitry of the wireless earpiece to a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Thus, the disputed portions of these limitations are met if “one or more” of the earpieces detects that a magnetic field is not present and goes into a high power mode. As noted above, on the current record, we are persuaded that Hain discloses that an earpiece goes to a high power state if it does not detect a magnetic field. See Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“F. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 21–26. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain and Shaffer teaches all of the limitations recited in claims 1–6, 8–12, and 14. G. Obviousness over Hain, Shaffer, and Sørensen Petitioner asserts that claims 3, 5–7, and 9–14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain, Shaffer, and Sørensen, citing the Declaration of Dr. Sayfe Kiaei for support. Pet. 61–67 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 27. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain, Shaffer, and Sørensen teaches all of the limitations recited in claims 3, 5–7, and 9–14.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,397,688 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01204 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–13 on all six asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In light of the argument and evidence before us, we find that Shaffer was previously presented to the Office and as such, the first prong of the Advanced Bionics test is satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is 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); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1–13 of the ’014 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, particularly wireless earpieces such as wireless headphones and hearing aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a POSITA [(person of ordinary skill in the art)]” (Prelim. Resp. 15 (citing Pet. 17)), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 15. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’014 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25. In addition, Patent Owner “applies Petitioner’s definition of a POSITA . . . but reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR and in other proceedings involving the ’014 Patent.” Prelim. Resp. 15 (citing Pet. 17).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“10–13, we disagree with Patent Owner’s narrow construction requiring that the smart case includes a rechargeable battery utilized to charge a wireless device. The patent discloses an illustrative embodiment that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown) . . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:28–37. However, as quoted below, we note the ʼ014 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies. Ex. 1001, 6:9–22 (emphases added). Accordingly, at this stage of the proceeding, in connection with claims 4, 6–8, and 10–13, we decline to adopt Patent Owner’s proffered claim construction of the phrase “smart case” that requires a rechargeable battery utilized to recharge a wireless device. No further express construction is required for the purposes of this Decision.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,117,014 - CSC Serviceworks, Inc. v. Payrange Inc.InstitutedPTAB · Jan 19, 2024 · IPR2023-01186 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–26 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Low.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“interest. Prelim. Reply 1–7. And, argues that “there is no reason for the Board to address PayRange’s RPI argument at institution because no time-bar or estoppel issue exists.” Id. at 2–3 (“To date, PayRange has not asserted the ‘045 patent against Kiosoft or TechTrex, and thus no time bar ever triggered under § 315(b) based on separate litigation between PayRange and Kiosoft/TechTrex.”). iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (“SharkNinja”) held that it best serves the Office’s interests in cost and efficiency to not resolve an RPI issue when “it would not create a time bar or estoppel under 35 U.S.C. § 315” in that proceeding. SharkNinja, Paper 11; see also Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at (USPTO Director May 22, 2023) (non-precedential). We do not address whether KioSoft and TechTrex are unnamed real-parties-in-interest because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” slip op. at 7
- Strike new argumentDenied
“TPG, 40. The block quotation image on page 73 of the Petition contains approximately 105 words. On this record, whether or not Petitioner accounts for these words in its certification is unclear. In any event, Patent Owner does not allege that it has suffered any undue prejudice from the extra 102 words. Nor does Patent Owner indicate that it promptly raised the issue to allow for Petitioner to take reasonable steps to remedy the issue. Under the circumstances in this case, we are not persuaded the Petitioner is abusing the process by including excessive words in the image so as to warrant not considering the Petition. During trial, all future papers must comply with applicable word- count limits and the parties must avoid images of block quotations, so that the words of the quotation are included in word-count limits.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not provide a description of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’045 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party provides an explicit construction of any claim terms. Petitioner asserts that “the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 11. Patent Owner asserts that “no constructions are necessary to deny institution because the petition facially fails to show that the references satisfy the plain language of the claims.” Prelim. Resp. 6. Except to the extent as discussed in our patentability analysis below, we do not need to construe any terms explicitly to reach our decision. 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,” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,856,045 - PTAB · Jul 21, 2023 · IPR2023-00435 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework: (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 the 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Patent Owner has not demonstrated that this case satisfies the first part” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 2; see generally Prelim. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that one skilled in the art would have computer-related experience, as that is more consistent with the prior art and patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). While Patent Owner’s proposed definition better reflects this requisite experience, we agree with Petitioner’s definition to the extent it recognizes that experience may compensate for formal education, and vice versa. See Pet. 2. Thus, at this stage, we adopt Patent Owner’s definition, but add Petitioner’s education-versus-experience caveat.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Given this definition, on the present record we disagree with Patent Owner that Mr. Cummings does not qualify as a person of skill in the art. Although Mr. Cummings may lack formal computer-related education, he “ha[s] extensive experience using software related to construction” including “decades working with software related to construction modeling and estimation.” Ex. 1003 ¶ 6. Mr. Cummings further “ha[s] experience collaborating with software developers to create new software in my field.” Id. At this stage, we find Mr. Cummings’s experience sufficient to qualify as a skilled artisan. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See Prelim. Resp. 42–43.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,648,800 - Cloudflare, Inc. v. Sable Networks, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00969 · APJ Juliet Mitchell Dirba · IPR · Institution
Instituted IPR on claims 1–32, finding a reasonable likelihood that claims 1–16 are obvious over Nomura and Forslöw and claims 3–5 and 17–32 over Nomura, Forslöw, and Reeves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“(Fintiv, Paper 11, 9–10), the Markman hearing does not show investment in the parallel proceeding. Accordingly, we determine that the parties and the court have invested minimal resources in the Litigation, which weighs against discretionary denial. Moreover, the undisputed evidence here shows that Petitioner acted diligently, filing its Petition only nine weeks after service of the complaint and before preliminary infringement contentions were served. Pet. 69, 71; see also Ex. 2004. This further weighs against discretionary denial. See Fintiv, Paper 11 at 11 (explaining that, in cases where the petitioner acted expeditiously, “this fact has weighed against exercising the authority to deny institution under NHK”). Accordingly, this factor weighs strongly against exercising discretion to deny institution.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’932 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Jeffay. See Ex. 1003 ¶ 23. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the Specification, the term “flow state information” is used to refer to several different types of information. For example, the Specification describes embodiments where “flow state information” includes: the protocol of a micro-flow, the LSP used for the micro-flow, and physical routing information, such as the egress linecard and port. E.g., Ex. 1001, 16:8–12 (“[F]low state information . . . includ[es] the LSP being used by the micro-flow, the specific egress linecard and port used by the micro-flow, and the protocol being used by the micro-flow.”); see also id. at 12:25–29, 14:23–29, 15:1–5, 17:29–32 (“[F]low state information . . . includ[es] which LSP the micro-flow is using, the outgoing label, and the label action for the micro-flow.”). Also, when discussing the creation of a flow block, the Specification states that “label identifier 245 and QOS identifier 245 [are] stored within a flow block 210, which will reflect unique flow state information for the identified micro-flow and is stored in the flow block table 156.” Ex. 1001, 10:36–47 (emphasis added). Label field 245 includes “characteristics of the data packets from a single micro-flow,” such as “the protocol type, the source address, the destination address, the source port, and the destination port.” Id. at 6:21–26. QoS field 240 includes “descriptors that describe QoS constraints of the related micro-flow,” including “rate information” such as “a guaranteed rate (GR) value 275, an available rate (AR) value 285, packet discard time limit (D) 265, delay variation (Q) 295 and a weighing factor (W) 265 for available rate traffic.” Id. at 6:33–43. The parties agree that the Specification indicates that information in QoS identifier 240 qualifies as “flow state information,” and on this record, we agree. See Pet. 25; Prelim. Resp. 22, 24. By the same token, the Specification indicates that information in label identifier 245 (e.g., protocol type, source address, destination port) also qualifies as “flow state information.” See Ex. 1001, 10:36–51. We disagree with Patent Owner’s contrary interpretation of the Specification. See Prelim. Resp. 23–27. Patent Owner begins by noting that each packet includes label field 245 (which differentiates flows), but only the first packet of a flow includes QoS field 240. Id. at 24–26 (citing Ex. 1001, 5:58–64, 6:21–23, 6:27–28, Fig. 2B). From this, Patent Owner concludes that QoS field 240—and not label field 245—includes “flow state information” (see id. at 23–26), as the claims require “creating a flow lock having flow state information for a received first data packet of a micro-flow” (id. at 24 (quoting Ex. 1001, 19:14–15)). Patent Owner’s logic is flawed. Patent Owner assumes that “flow state information” must be present in the first data packet and absent from other data packets, but Patent Owner provides no justification for this assumption. In particular, even if the claim requires the first data packet to include “flow state information,” the current record does not persuade us that the claim precludes other packets from also including this information.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,977,932 - PTAB · Nov 19, 2021 · IPR2021-00909 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–44 on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“There is no trial date scheduled for the Litigation. The evidence indicates that trial may be scheduled at the conclusion of the upcoming Markman hearing. Ex. 2003, 11; Ex. 1067 (parties’ proposed scheduling order); see also Ex. 1061, 1 (scheduling Markman hearing for January 12, 2022). Given the absence of a scheduled trial date, significant uncertainty surrounds when a trial will occur. Accordingly, we determine this factor weighs against exercising discretion to deny institution.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). At this stage, Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’593 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Jeffay. See Ex. 1003 ¶ 27. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“On this record, we agree with Petitioner that the identified limitations—which each recite “means for” performing a particular step— are means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We are also persuaded that Petitioner correctly identifies the recited functions for these limitations, and we agree that the Specification links the misbehaving flow manager (“MFM 210”) with each of the recited functions. See Pet. 12–14 (citing Ex. 1001, 6:5–47, 7:37–50, 7:57–8:37). Moreover, as Petitioner observes, the Specification states that MFM 210 can be implemented by “one or more processors on a line card 202 [that] execute one or more sets of instructions” or “hardwired logic components.” See id. at 11–12 (alteration in original) (citing Ex. 1001, 5:49–57, Fig. 2; Ex. 1003 ¶ 79). For purposes of this Decision, we apply the constructions identified” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“information packet Based on the record before us, we do not find it necessary to provide express claim constructions for any other terms or phrases. 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))). During the trial, the parties should directly address any claim construction adopted in this Decision if the party contends we should not adopt that construction in the final written decision.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - PTAB · Mar 22, 2021 · IPR2020-00336 · APJ Stacey G White · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 10, 12, 13, 16, and 17 because no construction error or abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 31. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“proceeding, that our construction of “conversational flow” is the result of a misunderstanding or misapprehension of the claimed invention or the prior art. IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion.” slip op. at 6
Claim constructionPatents in suitUS 6,665,725
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.