- PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
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 ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] 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. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(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. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“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. 8 The present record does not include any objective evidence of nonobviousness. 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 it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413 - PTAB · Jul 9, 2024 · IPR2024-00121 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1–53 on all petitioned grounds, finding a reasonable likelihood that Lee and Raven render claim 1 obvious.
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 ’701 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Petitioner argues that “the prior art provides a motivation” to make Petitioner’s modifications. Id. at 20. In particular, Petitioner relies on Raven’s teaching (discussed above in Section III.D.2) that “it is not uncommon for the installers to get confused between transmitting and receiving cables.” Ex. 1006, 1:13–25. Raven continues that this can make it “necessary for the installer to replace the existing cable or remove the connecting head from the fibres and effectively remanufacture the cable on site, which is very cumbersome and time consuming.” Id. at 1:32–35. Raven describes that its addresses the problem by disclosing a “fibre optic cable assembly and a method for changing the polarity of first and second optical fibres in a fibre optic cable assembly.” Id. at 2:17–19. Petitioner argues a person of ordinary skill in the art would have been motivated to make the modifications to “Lee’s connector to change polarity easily.” Pet. 19 (citing Ex. 1003 ¶¶ 193–200); see also id. at 27 (citing Ex. 1003 ¶ 221) (arguing the proposed modifications would have allowed “the polarity of Lee’s connector to be altered easily without the need to remanufacture the cable.”). Petitioner also argues the following: [T]his modification involves applying a known technique (Raven’s removable latch configuration) to a similar device (Lee’s connector) in the same way (providing latch couplings on exterior walls of a connector housing to receive a removable latch). A POSITA would have understood that there are a finite number of ways of making Lee’s latch arm 28 removably coupled to the exterior walls of its connector housing.” slip op. at 20
- Skill levelSkill level petitioner adoptedOther
“had “at least an undergraduate degree in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 4 (citing Ex. 1003 ¶¶ 117–128). Petitioner adds that “[a]dditional relevant experience can compensate for a lack of relevant education, and vice versa.” Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’701 patent specification and the prior art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the Petition “affords all terms their ordinary and customary meaning.” Pet. 4 (citing Ex. 1003 ¶¶ 129–131). For purposes of this Decision, no claim terms require express construction.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,181,701 - 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 - PTAB · Jul 9, 2024 · IPR2024-00115 · APJ Elizabeth M Roesel · IPR · Institution
Instituted review of claims 1–22 on all petitioned grounds after finding a reasonable likelihood of prevailing on claim 1 as obvious over Scherer and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion for Claim 1 We determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to claim 1 as obvious in view of Scherer and Lee.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Reasons to Combine Petitioner contends that it would have been obvious to modify Scherer’s connector in two ways. Pet. 14. First, Petitioner asserts it would have been obvious “to orient first and second optical fiber ferrules along the transverse axis of Scherer’s connector.” Id. (citing Ex. 1011 ¶¶ 128–133). Second, Petitioner asserts it would have been obvious “to modify Scherer’s extender 330d and lever 360a such that the edge defining the front end of the opening slides longitudinally along the upper surface of the lever 360a when the extender 330d is pulled rearwardly to depress the lever 360a.” Id. (citing Ex. 1011 ¶ 134). Addressing the first modification, Petitioner contends that it would have been obvious to arrange an array of fibers perpendicular to the longitudinal axis of the fiber, and the choice between the horizontal and vertical axes is “merely choosing one of the few and finite available options.” Pet. 14–15 (citing Ex. 1011 ¶¶ 135–144). Petitioner contends that, in view of the dual connections shown in Scherer Figures 11–13, it would have been obvious to modify the connector of Scherer Figure 14 “to make multiple connections from a single optical fiber transmission line 52a.” Pet. 15 (citing Ex. 1011 ¶¶ 135–144), 20 (citing Ex. 1011 ¶¶ 145–159). According to Petitioner, Lee provides an alternative solution for making multiple connections from a single optical fiber cable. Pet. 16, 21. Petitioner contends that a desire for increased connector density would have motivated a POSITA “to modify Scherer’s connector hood to include multiple ferrules positioned relative to the lever as disclosed in Lee.” Pet. 16–17 (citing Ex. 1011 ¶¶ 135–144), 22. Petitioner’s first modification relates to claim elements 1.1 and 1.3, as discussed below. Pet. 19–22, 26– 27.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, the Board interprets claim language using 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)). Petitioner asserts that the “Petition affords all terms their ordinary and customary meaning.” Pet. 4. For purposes of this Decision, no claim terms require express construction.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,307,369 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00315 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 9, 10, 12, 20, 21, and 23 on all petition grounds, granted joinder to IPR2024-00137, and authorized withdrawal of Samsung’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Carriers’ parallel district-court case. The arguments and facts are substantively the same as those presented in the T-Mobile IPR, except Petitioner here is not a defendant in the Carriers’ parallel district-court case. In the T-Mobile IPR, we found that factor 1 is neutral, factors 2, 3, and 5 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile 6 See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). IPR, Paper 15, 10–14. Because Petitioner in the instant proceeding is not a defendant in the Carriers’ parallel district-court case, we find that factor 5 weighs against exercising discretion to deny institution in the instant proceeding. Regarding the other factors, for the same reasons discussed in the decision to institute in the T-Mobile IPR, we find that factor 1 is neutral, factors 2 and 3 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile IPR, Paper 15, 10–14. We turn to Patent Owner’s arguments based on the Petitioner’s parallel district-court case. Our analysis of factors 1 and 4 is the same as that presented in the T-Mobile IPR because no stay has been requested in Petitioner’s parallel district-court case and Petitioner has agreed to be bound by the same stipulation submitted in the T-Mobile IPR. Joinder Mot. 1. Based on the facts presented by the parties, including the May 5, 2025 trial date, we find that factors 2, 3, and 5 weigh marginally in favor of exercising discretion to deny institution. Taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11, 6), we conclude that the evidence of record and our analysis of factors 1–5 relating to both district-court cases favors exercising our discretion to deny institution of an inter partes review. Regarding factor 6, for the reasons discussed in our institution decision in the T-Mobile IPR, we determine, on this preliminary record, that the merits here are compelling. Accordingly, we decline to exercise our discretion to deny institution” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 21–56, with T-Mobile IPR, Paper 1, 6, 25–60. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in” the T-Mobile IPR and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in” the T-Mobile IPR and is “signed by the same expert.” Id. at 1. Patent Owner states that its arguments on the merits in its Preliminary Response “are likewise ‘copycat’ of the merits arguments Patent Owner presented in its preliminary response in IPR2024-00137.” Prelim. Resp. 1 n.1. We instituted inter partes review of claims 9, 10, 12, 20, 21, and 23 of the ’888 Patent on May 22, 2024, based on the petition filed in the T-Mobile IPR after consideration of all arguments and evidence presented by the parties including Patent Owner’s arguments in its Preliminary Response. T- Mobile IPR, Paper 15. For the same reasons discussed in the Decision on Institution in the T-Mobile IPR, we find Petitioner has demonstrated a reasonable likelihood of showing at least one claim of the ’888 patent is unpatentable. See id. Accordingly, we find the Petition warrants institution of inter partes review of all challenged claims on all grounds raised.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Joinder Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T-Mobile IPR. See Joinder Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Joinder Mot. 6, 9–11. Accordingly, joinder to the T-Mobile IPR would further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Therefore, for the reasons given, we grant Petitioner’s Motion for Joinder and join Petitioner to the T-Mobile IPR.” slip op. at 13
Discretionary denialPatents in suitUS 9,094,888 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00317 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 23–27 on all petition grounds and granted Samsung’s motion to join the T-Mobile IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Institution of Inter Partes Review The Petition in this proceeding asserts the same grounds of unpatentability as the grounds on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in T-Mobile USA, Inc. et al. v. Cobblestone Wireless, LLC, IPR2024-00135” and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in IPR2024- 00135 and signed by the same expert.” Id. at 1.” slip op. at 7
- Parallel petitionsDecided for petitioner
“103(a) Chang III. ANALYSIS A. Discretionary Denial Argument Patent Owner asserts “[t]o the extent that the Board institutes review of the First Petition, institution of the Second Petition should be denied as an unnecessary parallel petition.” Prelim. Resp. 3. We denied institution in the first ranked proceeding. See Samsung Electronics America, Inc., v. Cobblestone Wireless LLC, IPR2024-00318, Paper 11 (PTAB June 21, 2024). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T- Mobile IPR. See Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Mot. 6, 9–11. Accordingly, joinder to the T-” slip op. at 11
Discretionary denialPatents in suitUS 8,554,196 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 8,554,196 - US Conec Ltd. v. Senko Advanced Components, Inc.Institution deniedPTAB · Jun 5, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6–16, 19, and 20 were unpatentable over the asserted obviousness grounds.
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. 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is undisputed. Prelim. Resp. 38. 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 ’190 patent and the asserted prior art references.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“consistent with or supported by Nakagawa’s teachings. Dr. Brennan modifies Nakagawa Figure 4B by adding yellow highlighting in the form of a cylinder and opines that the added highlighting represents an inner round surface extending along a longitudinal axis within tubular main body portion 41. Ex. 1016 ¶¶ 164–165. Dr. Brennan’s testimony does not take into account that the circular shape highlighted yellow in his annotation of Figure 4E is recessed within boot 40 and does not extend to the proximal end of the boot.5 Nakagawa does not support Dr. Brennan’s addition of a yellow-highlighted cylindrical surface extending to the proximal end of the boot, as depicted in his annotation of Figure 4B.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Nakagawa’s deficiency is apparent from Figure 2. As noted above, claim limitation 1.3.3 recites an “inner round surface defining a proximal end portion of the boot passageway.” Dr. Brennan testifies “As shown in Figures 4B and 2 of Nakagawa, reproduced above and below, respectively, a POSITA would have understood that Nakagawa’s inner round surface defines the proximal end at the center of the rotatable boot assembly.” Ex. 1016 ¶ 166. Annotated version of Figure 2 of Nakagawa, above, is a cross-sectional view of optical connector 1 having, among other things, boot 40 (Ex. 1007 ¶¶ 22, 46) and includes red highlighting of boot 40 and yellow highlighting of a 5 Like Petitioner and Dr. Brennan, we use the term “proximal end” consistent with the definition in the ’190 patent. Ex. 1016 ¶ 166 n.2. surface within tubular main body portion 41 of boot 40. Id. ¶ 56; Ex. 1016 ¶ 166. Relying on the testimony of Mr. Pearson, Patent Owner argues that the “inner round surface” of Nakagawa relied on by Petitioner “defines an intermediate portion of a boot passageway, that is distal of the proximal end portion of the boot passageway.” Prelim. Resp. 57 (citing Ex. 2007 ¶ 120). Upon consideration of Petitioner’s arguments and evidence and Patent Owner’s arguments and evidence, we agree with Patent Owner. As shown in Figure 2, the highlighted yellow surface relied on by Petitioner is recessed and does not define “a proximal end portion of the boot passageway” as recited in limitation 1.3.3. Dr. Brennan identifies the “boot passageway” as extending the entire length of Nakagawa’s boot 40. Ex. 1016 ¶ 164 (annotation of Nakagawa Figure 4B identifying boot passageway with dotted blue line). Dr. Brennan does not, however, identify an inner round surface that defines a proximal end of the boot passageway. We find that Dr. Brennan’s testimony (id. ¶ 166) is not supported by the teachings of Nakagawa and, therefore, we give little to no weight to Dr. Brennan’s testimony concerning an inner round surface. For the foregoing reasons, we determine that Petitioner has not shown” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,061,190 - Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentablePTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand
On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.
RulingsRemand decision- RemandOther
“with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“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). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “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). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20
Patent outcomesUS 6,529,561 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,529,561 - PTAB · May 22, 2024 · IPR2024-00137 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 9, 10, 12, 20, 21, and 23 over Chitrapu and TS 36.300, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“5 weigh in favor of exercising our discretion to deny institution. For the reasons discussed below, we conclude that Fintiv factors 1–5 weigh in favor of denying institution. Because Fintiv factors 1–5 favor denial of institution, we must also determine whether the Petition presents compelling merits. See” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“reference “explicitly suggests a POSITA[5] look to 3GPP standards” (Pet. 25–26 (citing Ex. 1003 ¶ 7; Ex. 1005 ¶ 117)) and the secondary reference is a 3GPP Technical Specification (Ex. 1223, 1). Petitioner’s argument is supported by Chitrapu and TS 36.300, respectively. See Ex. 1003 ¶ 7 (describing systems “constructed in accordance with current specifications of the 3rd Generation Partnership Program”); Ex. 1223 (describing that “[t]his technical Specification has been produced by the 3rd Generation Partnership Project”). At this stage, Patent Owner disputes Petitioner’s argument for only one limitation of claim 9 (Prelim. Resp. 8–20) and we find Patent Owner’s dispute does not undermine Petitioner’s showing on the current record. See infra § IV.D.3.c. For these reasons and the reasons discussed further below (see § IV.D.3), based on the record before us, we determine the Petition presents a compelling, meritorious challenge for independent claim 9. We, therefore, determine the facts of this case do not warrant discretionary denial.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated to implement” Chitrapu’s “‘smart handover’ process” “using the [more detailed description of the steps of handover] of TS 36.300” (Pet. 26– 30 (citing, e.g., Ex. 1003 ¶ 74; Ex. 1005 ¶¶ 120–123, 125, 160–162, 168, 178)), we find, based on the preliminary record, that Petitioner’s reason is supported by Chitrapu and TS 36.300, respectively. Petitioner, more specifically, argues “while Chitrapu describes the ‘negotiation’ and ‘execution’ of these steps [that is, steps of a handover] at a high level, the specific implementation details of these messages are not disclosed,” but TS 36.300 describes “the specific messages associated with that implementation.” Pet. 26–27.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“11 of Chitrapu discloses or suggests that the source base station determines whether or not the UE is ‘current covered’ by the target base station before initiating a handoff.” Prelim. Resp. 9–10. We find, based on the preliminary record at this juncture, that Patent Owner’s argument is contrary to Chitrapu’s disclosures. In particular, Chitrapu describes, “[w]here a handover is to occur, the new serving base station will first implement the selected beams determined for it and acquire the UE communication, before the original serving base station implements its new beam pattern.” Ex. 1003 ¶ 109 (emphasis added). Chitrapu describes expressly that a handover involves a “new” serving base station that differs from the “original” serving base station and that the “new serving base station . . . acquire[s] the UE communication.” Id. Chitrapu describes that, as illustrated in Figure 11, the “general process for conducting ‘smart’ handover” may “result in no handover being made.” Id. ¶ 108 (emphasis added). Figure 11 similarly states that either “THE TARGET BASE STATION,” which differs from the “SERVING BASE STATION” is determined and a “HANDOVER” is executed or the serving base station “MAINTAINS COMMUNICATION THROUGH REFOCUSING BEAM.” Id. at Fig. 11. The handover determination itself is a determination that a “UE” communication, will be acquired by a “new serving base station.” See, e.g., Ex. 1003 ¶ 109. Based on the preliminary record before us at this juncture, we find that the requirement of “a determination . . . that the wireless device is not currently covered by the first wireless network but is capable of being covered by the first wireless network” recited in limitation 9.a(2) is taught by Chitrapu’s handover determination. See, e.g., Ex. 1003 ¶ 109, Fig. 11; see also id. ¶ 106 (describing a “handover consideration process” involving “candidate cells,” which also are referred to as “candidate target cells”), ¶ 107 (describing “if a neighboring cell is not able to efficiently accept the UE, it may be determined that the original cell is best situation and should continue to serve the UE” (emphasis added)), ¶ 108 (describing a “general process for conducting ‘smart’ handover, which may actually result in no handover being made” (emphasis added)).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,094,888
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.