- PTAB · Sep 5, 2024 · IPR2024-00497 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Cisco would prevail on the challenged obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(“end-to-end tunnels” of limitation 1.3). As discussed below, even accepting that Chen does not teach the “end-to-end tunnels” of limitation 1.3, Hankins is not “the same or substantially the same” as Chen. General statements made by Patent Owner about what allegedly is “substantially the same” are not sufficient to show that Hankins is substantially similar to Chen. Petitioner relies on Hankins as teaching limitation 1.3 and the Examiner relied on Chen as teaching the ‘communication path’ recited in claim 1 prior to being amended to include limitation 1.3. Compare Ex. 1002, 150 (arguing patentability based on amendment to application claim 1) and Pet. 32 (arguing limitation 1.3 taught by Hankins). The question is not whether both references are relied on for the same limitation, but instead whether the teachings of the two references are the “same or substantially the same.” See Advanced Bionics, Paper 6 at 10 (factors (a), (b), (d)). In this case, Patent Owner has not shown substantial similarity between the two references.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have a working knowledge of techniques for transmitting data via a VPN and establishing tunneling links. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and four years of experience; or by obtaining a Master’s degree in computer science, but having only one to two years of experience; or by having no formal education but experience in storage systems of at least eight years. Pet. 16–17 (citing Ex. 1003 ¶ 53). Patent Owner does not propose a level of ordinary skill in the art. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Reddy and is consistent with the ’505 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’505 patent does not define “end-to-end tunnels.” The ’505 patent explains that “tunnels” link one LAN to another through routers or equivalent edge devices. Ex. 1001, 2:48–50. The ’505 patent further explains that communication paths between endpoint devices “may comprise 7 Iyer et al., US 2010/0275017 A1, published October 28, 2010 (Ex. 1007, “Iyer”). one or more intermediate tunnels connecting each endpoint device to one or more intermediate access point servers and one or more control servers.” Id. at 4:5–8. End point devices may be connected “with one or more multiple SRV_AP servers through one or more multiple concurrent tunnels.” Id. at 20:18–20. The description of the ’505 patent is consistent with Petitioner’s “State of the Art” as it relates to “tunnels.” Patent Owner’s reliance on Figures 32 and 33 is an impermissible reading of limitations from the specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily) (internal quotations and citation omitted). We preliminarily determine that the term “end-to-end tunnels” means communication paths connecting endpoint devices to one or more intermediate access point servers and one or more control servers. Ex. 1001, 4:5–8. Stated differently, the “end-to-end tunnels” connecting endpoint devices may include intermediate access point servers or control servers.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,630,505 - Sony Group Corporation / Sony Corporation et al. v. Inmusic Brands, Inc.All claims unpatentablePTAB · Jul 23, 2024 · IPR2023-00294 · APJ Christa P Zado · IPR · Final written decision
Claims 1–6 are unpatentable: claims 1, 2, and 4–6 as obvious over Cortellesi, and claim 3 as obvious over the listed combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In addition, as discussed below, infra Sec. II.B, in interpreting claim language we do so from the perspective of one with ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In determining the level of skill in the art, factors that may be considered include the educational level of the inventor, type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Petitioner contends “[t]he level of ordinary skill encompassed a” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“B. Claim Construction Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms generally are given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); 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))). The parties propose constructions for the terms “turntable,” “controller,” and “representative.” Pet. 20–21; PO Resp. 12–15; Pet. Reply 9–12; PO Sur-Reply 3–7. However, ultimately, the parties agree each of these terms may be accorded its plain and ordinary meaning and none of these terms require express construction, as discussed below. 1. “turntable” With regard to “turntable,” Petitioner points out “[t]he parties agree” slip op. at 19
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“expressly address the factors set forth in In re Klein. PO Resp. 3–8 (arguing Petitioner misunderstands prior art), 15–20 (providing background regarding Cortellesi), 20–36 (arguing non-obviousness, but not arguing that Cortellesi is non-analogous). In addition, Patent Owner’s arguments that Cortellesi is irrelevant because it relates to turntablism and disk jockeys (see, e.g., PO Resp. 3–8) are based on testimony by Mr. Zatkovich, which for reasons discussed above, supra Sec. II.D.4, is unsupported. Accordingly, Patent Owner’s arguments and evidence do not undermine Petitioner’s showing that Cortellesi is analogous art to the ’498 patent.” slip op. at 70
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“6. Rationale Supporting Obviousness Although this ground is based on a single reference, Cortellesi, Petitioner presents this ground as one of obviousness “because, while a POSITA would understand that Cortellesi has all components of the ’498 patent claims, Cortellesi does not always expressly describe or name those components.” Pet. 25. Petitioner asserts that there are “three principal instances where obviousness is employed.” Id. We highlight the following; however, these highlights should not be interpreted as limiting our findings and conclusions. Petitioner asserts that Cortellesi is analogous art to the ’498 patent, and that a skilled artisan would have had a reasonable expectation of success in arriving at the claimed invention. Id. at 33–34. “In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. [§] 103, the reference must be analogous art to the claimed invention.” MPEP § 2141.01(a) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 67
Patent outcomesUS 7,567,498 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,567,498 - PTAB · Jul 16, 2024 · IPR2024-00344 · APJ St John Courtenay III · IPR · Institution
Instituted IPR of claims 1–7 on obviousness over Agarwala in view of the knowledge of a POSITA; the Board found a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Ex. 1001, 23:1–10 (emphasis added). Nor do we find any explicit antecedent basis reference from any language in dependent claims 2–7 to the claim 1 preamble language “data beacons.” Because the limitations in the body of claim 1 do not rely upon and derive antecedent basis from the “data beacons” language recited in the preamble of claim 1, at this stage Patent Owner has not established that the preamble language “data beacons” is a necessary component. Thus, the Federal Circuit’s “antecedent basis” preamble case law weighs in favor of Petitioner. See, e.g., Bicon, 441 F.3d at 952.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’632 patent “would have been familiar with network communications and distributed storage systems, including network file systems,” and “would have a working knowledge of techniques for accessing data (reading and writing data) in distributed network storage systems, including parallel files systems.” Pet. 11–12 (citing Ex. 1003 ¶ 37). Petitioner further asserts: A POSITA would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and four years of experience; or by obtaining a Master’s degree in computer science, but having only one to two years of experience; or by having no formal education but experience in storage systems of at least eight years.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“For the reasons given supra under heading III (“Claim Construction”), we preliminarily disagree with Patent Owner that the preamble term “for providing data beacons” should be accorded limiting effect. Therefore, at this stage, we preliminarily find Petitioner has shown that the combination of Agarwala and the knowledge of a POSITA teaches preamble [1.0].” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,146,632 - PTAB · Jun 28, 2024 · IPR2024-00356 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, and 13–14 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”). We therefore institute inter partes review as to all of the challenged claims of the ’636 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Ghiasi and is consistent with the ’636 patent. Accordingly, we apply Petitioner’s articulation of the level of ordinary skill in the art of the ’636 patent.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner points to the ’636 patent as defining “‘property’ as “plain text that defines operations intended and expected in design data to be verified.” Pet. 13 (citing Ex. 1001, 1:20–22; Ex. 1003 ¶ 70). We preliminarily adopt Petitioner’s construction, to which Patent Owner does not respond, for purposes of this decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we determine Petitioner has adequately shown reasons for combining Abarbanel and Kobayashi for purposes of institution. We do question whether after a trial the combination will meet the preponderance of the evidence burden applied to final written decisions. We are not convinced that the lack of clarity is so compelling that we cannot decipher how the Petitioner asserts why a person or ordinary skill in the art would have combined Abarbanel and Kobayashi. Any one of the arguments made by Petitioner is sufficient at this stage, even if Petitioner presents contradictory alternatives. At this stage of the proceeding, alternative inconsistent theories for combining the references are permissible. We leave for trial the question whether or not Abarbanel’s RCTL technology would have been combinable with the state machine/statelist technology of Kobayashi. However, on this record, and giving weight to the Ghiasi Declaration, Petitioner sufficiently supports its assertion that a person of ordinary skill in the art “would have been motivated to combine Abarbanel with teachings for graphically editing IC specifications, including flowcharts, because the prior art is replete with teaching, suggestion, and motivation to do so.” Ex. 1003 ¶¶ 81–85. Furthermore, Abarbanel suggests related work involves “simulation efforts” with “automatically translating state machines.” Ex.1003 ¶ 122 (quoting Ex. 1004, 542).” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,603,636 - Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentablePTAB · May 31, 2024 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–15 and 17–18 were not shown unpatentable because the prior art did not disclose a “pre-set UE number” under the adopted construction.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“We are not persuaded to maintain our preliminary construction. Indeed, as already noted, Petitioner does not argue for the preliminary construction. Neither does Petitioner question the validity of the reasons given for the District Court’s construction. Rather, Petitioner repeats its position that it “takes no position on the District Court’s construction” and Petitioner does not have any reason “as to why that construction is wrong or right.” Tr. 18:24–19:6. We do not see any reason to construe “pre-set UE number” contrary to what the District Court has determined. Indeed, we find the District Court’s analysis of the issue highly persuasive and adopt it as our own. And Petitioner has not provided any argument regarding construction of the term, simply taking no position on its correctness.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Petitioner has forfeited the indefiniteness argument. Regardless, we are given no reason to find construction of the two means-plus function terms impossible given the District Court determination. We agree that the scope of the terms is based on a means-plus function analysis. We are not persuaded that structure is not sufficiently described.” slip op. at 14
- Strike new argumentNew argument disregardedDecided for patent owner
“Patent Owner argues that this argument was not presented in the Petition and is too late and/or incorrect. Sur-reply 5. We agree with Patent Owner. Neither Patent Owner nor the Board were given any notice of this argument in the Petition. Regardless, we find no merit in Petitioner’s argument. Fundamentally, our jurisdiction regarding patentability is limited to Sections 102 and 103 of the Patent Act. 35 U.S.C. § 311(b). We do not find that claim 18 is so indefinite that a patentability determination is impossible. See Intel Corp. v. Qualcomm Inc., 21 F.4th 802, 812–813 (Fed. Circ. 2021) (claim construction obligation “does not mean that the Board must reach a determination of the patentability of a claim on the presented prior-art grounds if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”). Indeed, the District Court determined that the corresponding structure is a processor programmed to either (1) descramble a Cyclic Redundancy Check (CRC) of Downlink Control Information (DCI) for scheduling the RAR according to a pre-set RA-RNTI or an RA-RNTI corresponding to the preamble, and receive the RAR, the RAR including at least one TCRNTI and/or at least one Uplink (UL) grant. Ex. 2008, 23 (quoting Ex. 1001, 2:66–3:4). (2) determine corresponding RA-RNTIs according to respective IDs and/or preambles, descramble a CRC of DCI for scheduling the RAR according to the corresponding RA-RNTIs, and receive corresponding RARs, the RAR including a TCRNTI and/or a UL grant allocated to the first UE or second UE.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Our construction of “pre-set UE number” is dispositive of this proceeding. See Section III.B.1 above. Petitioner agrees that both Li and Kim “don’t disclose that the message 3 includes a ‘pre-set number of UEs’” under our final construction of “pre-set UE number.” Pet. Reply 4; see also Tr. 7:20–22 (“Under [the District Court] construction, Li and Kim would not disclose Claim 1, at least Claim 1, of the ’430 patent”); 11:3–17 (Petitioner’s counsel arguing claim 18 is indefinite but agreeing neither claim 1 nor 18 have been shown unpatentable under the District Court construction of “preset UE number”). For the reasons set forth above, Petitioner has not shown a by a preponderance of the evidence that claims 1 and 18 are anticipated by Li.” slip op. at 18
Patent outcomesUS 10,448,430 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,448,430 - Samsung Electronics Co., Ltd. v. G+ Communications, LLCAll claims unpatentablePTAB · Apr 29, 2024 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–5, 7–9, 14, and 20 are unpatentable: Kwak anticipates them, and Kwak renders claims 8 and 9 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art proposed by Dr. Akl is slightly different from Petitioner’s proposal but Dr. Akl does not explain whether 4 Petitioner presents this challenge as two separate grounds. For “Ground 3,” Petitioner relies on Kwak’s PCT filing date (Pet. 3, 74–75), and for “Ground 4,” Petitioner relies on Kwak’s Provisional Application (id. at 3, 75–76). For “Ground 4,” Patent Owner does not claim the benefit of the filing date of the ’116 application. See PO Resp. 51. Accordingly, we do not analyze “Ground 4.” See Section III.H below. opinions would be different under Petitioner’s proposed level of skill. Furthermore, the level of skill is not dispositive of any issue here. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“corresponding to two or more selected investments” which was arguably anticipated by a reference that disclosed performing two separate requests to analyze two or more investments. Varma, 816 F.3d at 1362 (emphasis added). The Federal Circuit held that the claimed single statistical analysis of two or more investments was read out of the claim. Id. The Federal Circuit specifically held that “‘[c]omprising’ means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements.” Id. (emphasis added). Stated differently, “comprising” allows for broadening the claim with additional claim elements but not the broadening of existing claim elements. “plurality of heuristic modules.” Apple, 695 F.3d at 1373. The Apple court held that the “comprising” claim at issue was “not amenable to the addition of other modules that do not use different heuristic algorithms because such addition would impermissibly wipe out the express limitation that requires every module to have a unique heuristic algorithm.” Id. at 1379 (emphasis added). Relying on the Varma and Apple cases, we determine that the M transmission term is a claim element that cannot be broadened under the presumption arising from the use of “comprising.” Each case makes clear that the language of a particular element is not subject to being rewritten. This is not a situation where the claim is being broadened, as per the presumption, by the addition of elements. Rather, all embodiments in the specification show one predefined sequence per symbol. See, e.g., Ex. 1001, Figs. 2, 6, 7. Petitioner does not point to anything to the contrary. Indeed, Petitioner cannot cite to where the ’130 patent specification shows “more than one” predefined sequence per symbol. Tr. 26:8–19.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“In the Institution Decision, Patent Owner was given notice that it should address whether the relied-upon disclosure of Kwak based on the patent. Inst. Dec. 17. Patent Owner’s Response does not argue Kwak is not prior art based on its PCT filing date. See PO Resp. We make final our determination that Kwak is prior art to the ’130 patent based on Kwak’s PCT filing date. See Inst. Dec. 17 (“We preliminarily determine Kwak is prior art to the ’130 patent claims based on Kwak’s December 9, 2016 PCT filing date . . . .”).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“C. Legal Standard for Anticipation In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”). As the Federal Circuit has held: This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). A claim limitation is inherent if it is necessarily present in the prior art, not merely probably or possibly present. Akamai Techs., Inc. v. Cable & Wireless, 344 F.3d 1186, 1192 (Fed. Cir. 2003).” slip op. at 20
Patent outcomesUS 10,736,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - PTAB · Apr 25, 2024 · IPR2024-00024 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claim 1 would be unpatentable over Harada and Gutberlet.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’167 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Reasons to Combine Petitioner argues a person of ordinary skill would have been motivated to combine the teachings of Harada and Gutberlet for several reasons, in addition to the reasons discussed above with the claim limitations. Pet. 24–29. Among other things, Petitioner contends Harada and Gutberlet share a similar purpose and architecture, “both teach behavioral synthesis of C code to RTL; both simulate RTL; and both report latency metrics for each behavioral block.” Pet. 24 (citing Ex. 1004 ¶¶ 1–2, 72–73, 98, Figs. 16, 17; Ex. 1005, 1:10–27, 2:11–19, 7:3–6, 34:13–20, Table 38). Further, Petitioner contends combining the references’ teachings would have amounted to combining prior art elements according to known methods to yield predictable results, with Harada teaching “a process including steps for synthesizing behavioral code into RTL; performing RTL logic simulation; and analyzing the results, along with a table showing correspondence between RTL and behavioral code, to calculate latency for each behavioral block,” and Gutberlet teaching “using logic simulation to calculate latency for each behavioral block, measured in clock cycles/ns, and reported in a table.” Pet. 24–25 (citing Ex. 1004 ¶¶ 98, 117, 118, 132–134; Ex. 1005, 2:11–19, Table 38). Patent Owner argues a person of ordinary skill in the art would not have combined Harada and Gutberlet as suggested in the Petition because, according to Patent Owner, among other things, “Harada does not disclose using RTL in the context of its disclosure” and “Gutberlet discloses loop handling techniques on behavioral code, and any performance assessment occurs prior to generating RTL.” Prelim. Resp. 40. Further, Patent Owner argues Gutberlet explicitly teaches away from generating RTL code, analyzing the latency, and re-editing the source code if there is a latency issue and “[t]herefore, a [person of ordinary skill in the art] would not combine Gutberlet with any reference to satisfy the latency analysis elements of the ’167 claims. Prelim. Resp. 41 (citing Ex. 1005, 2:11–19). We again note that Patent Owner’s arguments are not currently supported by declaration testimony and amount to attorney argument at this stage in the proceeding. Petitioner’s arguments, on the other hand, are supported by the testimony of Dr. Lin in addition to the cited portions of the references, and we thus preliminarily find Petitioner has adequately articulated reasons for combining the references for the purposes of institution.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther
“Shin’s Status as Prior Art The parties dispute whether Shin qualifies as a publicly accessible publication. According to Petitioner, prior to the critical date, Shin was published on the Internet by professors at the University of California at Irvine on both the University’s website and on the professors’ webpages. Pet. 17; Prelim. Reply 1–3. According to Petitioner, the authors were prominent and well-known in the industry, Shin was the very first publication listed on the relevant page of the University’s website in 2003, and Shin was one of only 44 papers on that page. Prelim. Reply 1–3. Patent Owner argues that Shin was not indexed or searchable in a meaningful way and that there is insufficient evidence that an interested person of ordinary skill exercising reasonable diligence would have located Shin. Prelim. Resp. 17–18, 21; Prelim. Sur-Reply 1–3. Patent Owner further argues the facts of Shin’s alleged availability are similar to the facts of Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772-74 (Fed. Cir. 2018). Prelim. Resp. 19–21; Prelim. Sur-Reply 1–3. At this preliminary stage, we question whether Petitioner has sufficiently shown that Shin qualifies as a publicly available publication.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar field with at least two years of experience in the field; or a master’s degree with specialization in the field,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 21 (citing Ex. 1003 ¶¶ 63–64). Petitioner also states that the relevant field is “IC design and manufacturing, including EDA tools and behavioral synthesis.” Pet. 21 (citing Ex. 1001, 1:17–2:37; Ex. 1003 ¶ 62). At this stage, Patent Owner does not address the level of ordinary skill. For the purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Lin and is consistent with the level reflected by the ’167 patent and the asserted prior art.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,971,167 - Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentablePTAB · Mar 29, 2024 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Final written decision
The Board held claims 1, 2, 6, 8–11, 15, 17, and 18 not shown unpatentable over Kannan because Kannan did not disclose the construed transmission blocks.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded that “single entity” requires a separate construction or additional clarification, presumably by “testimonial evidence.” See Pet. Supp. Br. 4 n.1. Here, we need not determine the precise outer bounds of the term “transmission block,” including all the different types of single entities, because the Board is required to construe the claim to only the extent necessary to resolve the dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The relevant context for understanding what is a single entity is the disclosures of Kannan and the ’443 patent regarding “code block,” “transport block,” and “transmission block.” Those are the “single entities” and are the focus of the dispute. For the preceding reasons we adopt our preliminary construction of “transmission blocks” as our final construction. No additional terms are in dispute that require construction.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’443 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 3–4 (citing Ex. 1003 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill and “takes no position with respect to Petitioner’s proposed level of ordinary skill in the art” because “it does not affect the ultimate analysis.” PO Resp. 11–12. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’443 patent. The proposed level of skill is consistent with the field of the invention as indicated by the cited prior art.” slip op. at 7
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Kannan is based on the OSI model and describes control and data transmission on the MAC and PHY layers. Ex. 1006 ¶ 63. Kannan explains that “[w]ireless devices may exchange data using Medium Access Control (MAC) layer units known as transport blocks that may include a number of CBs.” Id. ¶ 8. Further, at the PHY layer, “a transport block may be divided into CBs.” Id. ¶ 52. Kannan continues to describe that “code blocks” “may be bundled into multiple bundles having a certain number of CBs.” Id. These parts of Kannan support the Akl Rebuttal Declaration conclusion’s regarding the OSI model in Kannan. Ex. 2007 ¶¶ 31–37, 49–50. Thus, we credit the Akl Rebuttal Declaration on this issue (id.) over Dr. Ding’s testimony (Ex. 1016 ¶ 13) because it is better supported by Kannan. Based on the preceding, we find that “code blocks” on the PHY layer are found only with “transport blocks” and are not a “separate entity.” See PO Supp. Br. 2.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Kannan is based on the OSI model and describes control and data transmission on the MAC and PHY layers. Ex. 1006 ¶ 63. Kannan explains that “[w]ireless devices may exchange data using Medium Access Control (MAC) layer units known as transport blocks that may include a number of CBs.” Id. ¶ 8. Further, at the PHY layer, “a transport block may be divided into CBs.” Id. ¶ 52. Kannan continues to describe that “code blocks” “may be bundled into multiple bundles having a certain number of CBs.” Id. These parts of Kannan support the Akl Rebuttal Declaration conclusion’s regarding the OSI model in Kannan. Ex. 2007 ¶¶ 31–37, 49–50. Thus, we credit the Akl Rebuttal Declaration on this issue (id.) over Dr. Ding’s testimony (Ex. 1016 ¶ 13) because it is better supported by Kannan. Based on the preceding, we find that “code blocks” on the PHY layer are found only with “transport blocks” and are not a “separate entity.” See PO Supp. Br. 2. Thus, Petitioner has not shown that claims 1, 8, 10, and 17 are unpatentable by a preponderance of the evidence.” slip op. at 21
Patent outcomesUS 10,594,443 not shown unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,594,443 - PTAB · Mar 5, 2024 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 based on Sinharoy.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. Patent Owner does not comment on Petitioner’s proposed level of ordinary skill nor does it propose an alternative. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claim language of independent claim 1 recites “wherein the caching agent is a single caching agent for the processor.” Ex. 1001, 7:58– 59 (emphasis added). Claims 11 and 15 also recite a “single caching agent.” Ex. 1001, 8:38 (claim 11), 9:7 (claim 15). Similarly, as Patent Owner notes, the specification of the ’895 patent discloses at various places a “single caching agent.” See, e.g., Ex. 1001, 7:13–17 (“[E]ach of the processors can include an IIO module to provide an interface to one or more off-chip peripheral devices and a single caching agent shared by the IIO module and the cores of the processor.”) (emphasis added)). The description of Figure 6 explains that a “single caching agent” may be formed from distributed portions. Ex. 1001, 6:35–37. At this stage of the proceeding we preliminarily construe a “single caching agent” to mean one caching agent for the processor, which may be formed from distributed portions.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a person of ordinary skill would have been motivated to combine Xu with Sinharoy because both use the POWER7 processor chip. Pet. 33 (citing Ex. 1007 ¶ 97 (“Xu, in the same field of art as Sinharoy and in fact describing the same POWER7 chip as Sinharoy”). Patent Owner does not challenge the motivation to combine these references. We find that, on this record, Petitioner has demonstrated sufficiently a motivation to combine Sinharoy and Xu. Patent Owner also does not address Petitioner’s showing for claims 2 and 10. For the reasons given above and in the Petition, we find Petitioner demonstrates sufficiently that claims 2 and 10 are taught or suggested by the combination of Sinharoy and Xu. On this record, Petitioner demonstrates a reasonable likelihood of prevailing on these challenges.” slip op. at 21
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - PTAB · Feb 26, 2024 · IPR2023-01335 · APJ William V Saindon · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, and 13–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Finkelstein.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” Upon considering the Petition and evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’833 patent. Accordingly, we institute an inter partes review of claims 1–5, 7, and 13–18 of the ’833 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Horst, Petitioner contends that an ordinarily skilled artisan for the ’833 patent: would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, material science, physics, applied physics, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Pet. 9 (citing Ex. 1029 ¶¶ 29–30). Based on the record presented, including our review of the ’833 patent and cited prior art, we agree with Petitioner’s proposed definition. Thus, we apply Petitioner’s definition for this decision. See, e.g., Ex. 1001, 1:9–26 (describing in the “Background” section of the ’833 patent various conventional methods of computation and their alleged deficiencies).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe that any term requires explicit construction.” Pet. 10 (citing Ex. 1002 ¶ 66). Having considered the record, we conclude that no terms require express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“workload.” Id. at 24 (citing Ex. 1005 ¶ 26; Ex. 1029 ¶ 84). Petitioner correlates the “unused processor core power” as that from the claimed first domain, and the GFX performance to “a core in the second domain.” Id. Petitioner’s position is persuasive on this record. For example, Finkelstein discloses that processors having multiple power planes may share “the same power source 120” and, correspondingly, “a common package power/energy budget.” Ex. 1005 ¶ 26. We credit Dr. Horst’s unrebutted testimony that graphics effects are “being performed by a core in the second domain (e.g., Core 2)” as claimed. Ex. 1002 ¶ 84.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,775,833
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.