- PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00439 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not justify a second parallel petition after instituting review in IPR2024-00438.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“CTPG 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For instance, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Petitioner does not argue that the number of claims in the parallel litigation is “large.” Additionally, while Petitioner does argue that the prior art relied on might be antedated, Patent Owner responds by “stipulat[ing] that if the Board were to institute only [Petitioner’s] second ranked petition (IPR2024-00439), and deny IPR2024-00438 and IPR2024-[0]0440 as improper parallel petitions, then, in the IPR2024-00439 proceeding, Patent Owner will not challenge the status of Petrovic and Cholas as prior art.”11 Prelim. Resp. 41.” slip op. at 9
Discretionary denialPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00440 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), because the third parallel petition would add unnecessary burden after instituting the first petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. CTPG 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For instance, a second petition” slip op. at 8
Discretionary denialPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 1, 2024 · IPR2024-00437 · APJ Lynne H Browne · IPR · Institution
The Board denied institution on all asserted grounds for claims 1–82, exercising discretion because Petitioner did not justify a third parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“references describes receivers that are strikingly similar to the receiver disclosed in the ’866 Patent, yet each reference has different strengths with respect to various different claims.” Id. at 2. We do not find these arguments persuasive. Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon might be antedated, that argument only applies to the prior art relied upon in the second ranked petition (IPR2023-00436) as Patent Owner “cannot swear behind the Zhang, Pugel and Crols references.”8 Prelim. Resp. 39.” slip op. at 10
Discretionary denialPatents in suitUS 11,381,866 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 1, 2024 · IPR2024-00436 · APJ Lynne H Browne · IPR · Institution
The Board denied institution on claims 1–82, exercising § 314(a) discretion because Petitioner did not justify a second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon might be antedated, Patent Owner responds by stipulating “that if the Board were to institute only Comcast’s second ranked petition (IPR2024-00436), and deny IPR2024- 00435 and IPR2024-0437 as improper parallel petitions, then, in the IPR2024-00436 proceeding, Patent Owner will not challenge the status of Petrovic and Cholas as prior art.”10 Prelim. Resp. 41. Petitioner’s remaining argument is no more persuasive. Responding to Petitioner’s argument that different prior art has different strengths with respect to different claims, Patent Owner points out that Petitioner “provides no explanation as to why the first ranked petition is not sufficient or why, if Petrovic is stronger for means-plus-function limitations, it could not have included Petrovic in the first ranked petition for the disclosure of means-plus-function limitations.” Prelim. Resp. 44. We agree. As our Practice Guide cautions, “[t]wo or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Practice Guide 59. This is especially concerning here, where the instituted trial in IPR2024-00435 will involve four references and eight grounds. Adding an additional twenty-two grounds and seven references from this Petition to the mix would create an “unnecessary burden.”” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“In sum, in the words of our Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Practice Guide 60. III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’866 patent as the petition in IPR2024-00435. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1–82 of the ’866 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 11,381,866 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
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 discussed below, we determine, based on the record before us, that 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 for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - PTAB · Sep 13, 2024 · IPR2024-00619 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR of claims 1–8 on all asserted grounds; the Board found compelling evidence that claims 1 and 6 would have been obvious over Yu and Acharya.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5, overall, favors exercising our discretion to deny institution of an inter partes review. The sixth Fintiv factor takes into account other circumstances that may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, if we determine that the other Fintiv factors favor discretionary denial, as we do here, we must also consider whether the Petition presents compelling merits. CommScope, Paper 23 at 5. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. Accordingly, we first discuss the merits of the Petition. We then discuss our conclusion that the merits are compelling.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we institute an inter partes review.” slip op. at 2
- BurdenOther
“we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“application on April 11, 2013. Ex. 1004, codes (22), (43). The ’383 patent issued on August 7, 2018, and the earliest claimed priority date for the ’383 patent is March 28, 2013. Ex. 1001, codes (45), (63), (30). Thus, Acharya qualifies as prior art under § 102(a)(2) because it was filed on October 5, 2011, and thus was “effectively filed before the effective filing date” of the ’383 patent. Despite the Petitioner’s citation to the wrong sub-part of section 102, we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,045,383 - PTAB · Sep 10, 2024 · IPR2024-00607 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution for claims 1–4 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“As discussed above, Fintiv factors 2, 3, and 5 favor denial. Factor 1 is neutral, and only factor 4 weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). According to the Guidance Memo, the compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021- 01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”). We note that the Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“c. Summary In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Lee do not meet the compelling merits standard with respect to claim 1. Petitioner does not rely on Kim to teach the recited “predetermined time from the transmission of the deactivation message.” See Pet. 34–37, 48–55 (relying on Kim for limitation “stopping downlink (DL) transmission of the secondary carrier and initializing uplink (UL) and DL retransmission buffers after transmitting the deactivation message”). Claims 2–4 depend from claim 1. Petitioner’s contentions regarding these dependent claims rely on the same analysis for the limitation of claim 1 discussed above. See Pet. 55, 57, 60. Accordingly, we also determine that Petitioner’s obviousness challenges based on Lee do not meet the compelling merits standard with respect to claims 2–4.” slip op. at 30
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,144,106 - PTAB · Sep 3, 2024 · IPR2024-00608 · APJ Amber L Hagy · IPR · Institution
The Board denied institution on claims 1–4 under § 314(a), finding the Fintiv factors favored denial and the Lee-Kim obviousness challenge lacked compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, we must address the merits of the Petition to determine whether they are compelling. The Guidance Memo states that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. A challenge can meet this standard only “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021- 01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”). The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons that follow, we exercise our discretion to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner. Claim 1 recites “changing the secondary carrier to a deactivation state based on a predetermined time from the transmission of the deactivation message.” To illustrate, Figure 10 of the ’662 patent is reproduced below. Figure 10 is a diagram of a carrier state management method. Ex. 1001, 4:49–50. The ’662 patent teaches that “the base station performs the step . . . of transmitting the deactivation message to the terminal at a time t1.” Id. at 13:50–52. The ’662 patent further teaches that “[t]he base station may perform the step . . . of changing state information for a secondary carrier that is managed by the base station to the deactivation state at a time t5 after the lapse of a predetermined time (t5–t1).” Id. at 13:60–63. As discussed above, Petitioner argues that Lee’s disconnection time corresponds to the recited “predetermined time.” Pet. 43. To satisfy the limitation of claim 1 under this theory, Petitioner must show that Lee’s disconnection time is the time from the transmission of the AAI_CM-CMD” slip op. at 30
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,565,662 - PTAB · Aug 5, 2024 · IPR2024-00595 · APJ Brian P Murphy · IPR · Institution
Instituted IPR of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including obviousness over Pierre and Gershman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Advanced Bionics Part 2 We also consider whether Petitioner has demonstrated the Office erred “in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9; see also NPRM at 28700 (“material error may include misapprehending or overlooking clear, specific evidence in the prior record, including teachings of the relevant prior art that impact the patentability of the challenged claim”). We evaluate Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated material error. Id. at 10. Those factors are: (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (Director Review vacating Board decision denying institution, finding examiner misapprehended or overlooked prior Board determinations regarding same references in related IPR). In evaluating Becton, Dickinson factors (c) and (e), we determine Petitioner has shown the Examiner erred by overlooking Gershman’s teaching of a “moving plate” and digital image capture of an unrestrained chick as a disclosure of the “unrestrained chick” limitation. More particularly, the record evidence at this stage of the proceeding indicates the Examiner did not meaningfully consider Gershman’s disclosure: (i) of Figure 3, showing a chick on a “moving plate,” (ii) of Figures 5 and 6, digital images of a chick “reflexively” opening its wings without restraint for image capture, or (iii) that it would have been “obvious” to “adapt[]” and “add” the “moving plate” system to the “end” of industrial chick processing lines. Pet. 10, 22, 36–37 (compare Ex. 1002, 220–221, 226–228 with Ex. 1003, 1, 2, 5, 6, 10). Regarding Becton, Dickinson factor (f), the Petition presents additional evidence and facts, including material teachings of the new Pierre reference regarding the “unrestrained chick” limitation as detailed in Part 1 above, that warrant inter partes review.” slip op. at 13
- 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, 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 ’124 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’124 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unrestrained chick” limitation in independent claims 1 and 6. Pet. 36–37, 39–40. Petitioner emphasizes Pierre’s teaching of placing a chick in a position where it is falling so that it will open its wings “naturally” for image capture by a digital camera. Id. at 36, 39 (citing Ex. 1004, 4). Petitioner argues it would have been obvious to use Gershman’s moving plate to cause a chick to fall and “reflexively” open it wings for image capture as in Pierre, “because both Pierre and Gershman are in the same field and directed to solving the same problem, namely, automating assessment of chicks by imaging their wings.” Id. at 37, 39–40. Patent Owner does not address the argument. See Prelim. Resp. 12–15. On the present record, we agree with Petitioner’s reliance on Pierre-Gershman and also refer to our analysis of Ground 1 and the teaching of Gershman’s “moving plate” as a disclosure of the “unrestrained chick” limitation. On the present record, Petitioner’s argument and evidence support the position that Pierre and Gershman are analogous art and the proposed combination of Pierre-Gershman teaches the “unrestrained chick” limitation. slip op. at 24
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,806,124
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.