- Tp-Link Corporation Limited v. Netgear, Inc.Institution deniedPTAB · Mar 8, 2024 · IPR2023-01393 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–24 unpatentable over Morikawa or Serizawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 Petition and Preliminary Response we conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’714 patent.” slip op. at 2
- BurdenDecided for patent owner
“Critically, though, Petitioner does not adequately show that Morikawa actually teaches FDD or receiving and transmitting data at the same time. We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a [b]achelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10 (citing Ex. 1002 ¶¶ 53–56). Patent Owner asserts that “a person of ordinary skill in the art would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data communication, or wireless networking systems.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 25). On the current record, we do not discern a meaningful difference between the parties’ proposals, and we apply Petitioner's proposed level of ordinary skill for the purposes of this Decision. slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,714 - PTAB · Mar 8, 2024 · IPR2023-01400 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–37 because Petitioner showed a reasonable likelihood of prevailing on claim 1 under §103 over Gupta, alone or with Murty.
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 ’242 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 4 (citing Ex. 1002 ¶¶ 49–52). Because Patent Owner did not file a Preliminary Response, Patent Owner does not offer an alternate contention. For purposes of this Decision, we apply Petitioner's proposal. slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“i. Reasons to Combine Petitioner contends Gupta and Murty are analogous references with compatible teaches and that a person of ordinary skill would have recognized that “Murty’s detailed software architecture could be used to improve and enhance the operation of Gupta’s system.” Pet. 13–15. At this stage, Petitioner’s showings of reasons to combine the teachings of Gupta and Murty are unrebutted and are adequate for the purposes of institution.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,327,242 - PTAB · Mar 7, 2024 · IPR2023-01352 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–5 and all petition challenges, finding a reasonable likelihood that Petitioner would prevail on at least one claim, including obviousness over Meisel, Kaneda, and Freidin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5 in the ’058 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of the Preliminary Response, Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7 (quoting Pet. 7). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as it is consistent with the level of skill shown in the ’058 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“recited in claim 1 excludes information reflected in acoustic signals. Claim 1 does not recite whether the voicing sensor is acoustic or non-acoustic. See Ex. 1001, 11:8–35. Notably, claim 2’s limitations are similar to those in claim 1, but claim 5, which depends from claim 2, recites the “voicing sensor includes at least one detector selected from a group including . . . acoustic throat microphones.” See id. at 12:1–5, 30–33 (emphasis added). That is, claims 2 and 5 suggest that neither the term “physiological” nor the term “voicing sensor” excludes acoustic microphones. On the current record, we preliminarily determine that the ’058 patent also supports this reading. For example, the ’058 patent discloses a “nonacoustic sensor” but explains that other embodiments “may use any sensor that is able to detect human tissue motion associated with speech and is unaffected by environmental acoustic noise.” Id. at 3:60–63. The ’058 patent also discloses that some embodiments are “acoustic-only.” Id. at 3:10–4:13, 4:42–57, cited in Prelim. Resp. 10. Thus, we determine, at this stage, the term “voicing sensor” encompasses acoustic microphones. See Pet. 21 (citing Ex. 1001, 3:61–63; Ex. 1005, 1:10–15, 2:31–35).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“stage, we are persuaded that Petitioner sufficiently supports its assertion that Freidin’s cross correlation would improve the accuracy of Meisel’s identification. Pet. 31–32. The Petition explains that, unlike Meisel, Freidin describes how to use the cross correlation data: While Meisel and Freidin both correlate between signals, Freidin describes the cross correlation function to produce the cross correlation data and explains how to use that cross correlation data to compare it with threshold yTH to identify a result, such as Meisel’s voiced speech.” slip op. at 33
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,246,058 - PTAB · Mar 6, 2024 · IPR2023-01403 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petitioned grounds, finding a reasonable likelihood of unpatentability for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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, Petitioner has met that standard.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience.” Pet. 3 (citing Ex. 10022 ¶¶ 50–53). Petitioner also asserts that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Id. Patent Owner did not file a Preliminary Response to the Petition. For this decision, we apply the level of skill proposed by Petitioner. If Patent Owner proposes a different skill level in its response, the parties are encouraged to discuss how those differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Construction 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) (citing” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As for Ground I only, we preliminarily determine that Liu’s disclosures are insufficient to support Petitioner’s argument about the details of Liu’s database, even in view of the knowledge of a person of ordinary skill in the art as reflected in cited evidence. Id. Specifically, apart from Liu’s statement about “one or more databases,” Petitioner has not identified any teachings from Liu that describe the database’s organization. See id. at 18–20. So one of ordinary skill in the art would have had to modify Liu to arrive at tables with rows representing STAs and columns containing the related information described in the Petition. See id. The Petition, however, provides insufficient reasoning and supporting evidence why one of ordinary skill in the art would have done so. See id. at 19. Although Petitioner cites Bharghavan and other references discussing databases generally, Petitioner does not propose modifying Liu with any specific features from those” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,468,025 - Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentablePTAB · Feb 20, 2024 · IPR2022-01283 · APJ Monica S Ullagaddi · IPR · Final written decision
The Board held claims 1–63 not shown unpatentable under either §103 ground because Petitioner did not sufficiently support the asserted digital mapping and delta limitations.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge. Petitioner’s obvious-to-try rationale is insufficient to show that a person of ordinary skill would have used a digital-to-digital-mapping in which there are regions in which the deltas are both decreasing and increasing. Moreover, Petitioner’s Reply includes positions not supported by a Reply Declaration from Dr. Blumenthal and thus, constitute attorney argument that is not sufficiently supported by evidence. See, e.g., Pet. Reply 14–15 (Petitioner arguing “Roberts’ design obviates the need for a separate,” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Inst. Dec. 35 (citing Ex. 1006, 8:2, 8:8). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’998 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:64–2:36) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 3001, 172).6 We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’998] patent would understand that th[e] [claimed] approach of mapping, based on the converter output pattern differs 6 Ex. 3001 is a portion of the prosecution history of U.S. Patent No. 11, 133, 872, a parent of the ’998 patent. Ex. 2022 ¶ 34 (citing Ex. 1001, 2:5–9 (’998 patent disclosing common, prior art solutions such as “an analog pre-distortion circuit to feed the modulator”); Ex. 1005, 2:53; Ex. 1006, 7:67–8:5, Fig. 6); Ex. 1001, 2:35– 37(the ’998 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the parent ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts,” which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended claims, as the ’998 Patent itself admits.” Id. ¶ 79 (citing Ex. 1001, 2:5–9; Ex. 2009, 2; Ex. 1010, 16–48). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 3001, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’998 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“limitation 1.9. This is because the idealized sinusoidal curves that form the basis of Dr. Blumenthal’s analysis lack a sufficient showing of relevance to the teachings of Taraschuk cited by Petitioner. Patent Owner persuades us that Petitioner does not point to any basis for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 1.8 and 1.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 1.8 and 1.9. Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two,” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“IV. MOTION TO EXCLUDE Patent Owner requests that we exclude Petitioner’s Exhibits 1031 through 1038 submitted with Petitioner’s Reply. Paper 25, 1. Petitioner opposes. Paper 27. As we do not rely on any of these exhibits in rendering the findings and conclusions in this Decision, Patent Owner’s motion is moot.” slip op. at 40
Patent outcomesUS 11,342,998 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,342,998 - PTAB · Jan 19, 2024 · IPR2023-01229 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 23–28 and 41–46 based on obviousness over Kanamori and McCowan, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage and on this record, Petitioner sufficiently shows that Kanamori discloses a microphone device corresponding to the recited microphone array in [23P] (Pet. 11), Kanamori’s main signal is a first virtual microphone as recited in [23A] and it would have been obvious to use omnidirectional microphones as recited in [23B] (id. at 11–16), Kanamori’s noise-reference signal m2 is a second virtual microphone as recited in [23C] (id. at 16–17), Kanamori’s second combination is different from the first as recited in [23D] because, unlike m1’s formation, m2’s formation does not involve multiplication by an amplification ratio (id. at 17–18), Kanamori discloses or suggests the first linear response recited in [23E] as discussed above and shown by the plots in the Petition (id. at 18–25), Kanamori discloses or suggests human speech, as in [23H], because Kanamori states that the voice is “from the talker” (id. at 43). Thus, Petitioner has shown a reasonable likelihood of prevailing as to the unpatentability of claim 23. See id. at 11–43.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s explanation is sufficient for the Board to institute trial in this case. Specifically, Petitioner asserts that, for speech and noise with farfield origins, Kanamori’s microphone device would struggle to differentiate and suppress noise coming from the same direction as the speech. Id. at 30 (citing Ex. 1005 ¶ 168; Ex. 1003 ¶ 87). According to the Petition, it would have been obvious to modify Kanamori’s noise-reference signal m2 to account for different amplitudes, which may be significant for near-field cases. Id. at 31 (citing Ex. 1006, 90; Ex. 1003 ¶ 89). Petitioner’s rationale relies upon McCowan to show that it would have been obvious to modify Kanamori’s noise-reference signal m2 in those near-field cases. Id. Petitioner’s arguments are adequately supported by the record at this” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“II. MOTION FOR JOINDER Petitioner filed a Motion for Joinder (Paper 3), requesting joinder as a petitioner in IPR2023-00561. IPR2023-00561 had been joined to IPR2022- 01061. IPR2023-00561, Paper 9 (Granting Motion for Joinder). On August 10, 2023, the Board terminated both IPR2022-01061 and IPR2023- 00561. IPR2023-00561, Paper 30. Thus, the Motion for Joinder is dismissed as moot.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“According to Patent Owner, A person of ordinary skill in the art (‘POSITA’) would have a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. Work experience can substitute for formal education and additional formal education can substitute for work experience. Prelim. Resp. 15. In Patent Owner’s view, this agrees with Petitioner’s definition. Id. (citing Pet 4–5; Ex. 1003 ¶¶ 24–25). We see no meaningful differences in the parties’ proposed qualifications that would affect our decision here. In this decision, we adopt a definition of one of ordinary skill in the art consistent with the parties’ proposals. See Pet. 4–5; Prelim. Resp. 15. To the extent that the parties disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,503,691 - PTAB · Jan 10, 2024 · IPR2023-01119 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR of claims 1–5 on all petition challenges, finding a reasonable likelihood that Sony would prevail on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“C. Motion for Joinder and Consolidation Petitioner moves for joinder to and consolidation with related IPR proceeding IPR2023-00222 under 35 U.S.C. § 315 and 37 C.F.R. § 42.122(b). Paper 3 (Motion for Joinder). IPR proceeding IPR2023-00222 has been terminated due to settlement. See IPR2023-00222, Paper 13. Thus, there is no proceeding with which to join the present case. Accordingly, Petitioner’s motion for joinder and consolidation is denied.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The analysis below, however, discusses the meaning of “noise” as recited in claim 1. See supra §§ E.1.i. & F.1.e. In particular, at this stage and on this record, we disagree with Patent Owner’s arguments in claim 1 because we determine that the claim 1 sets the boundary for what is considered “noise” for the reasons discussed below. See id. During trial, the parties are invited to address whether the Board should read the claim in this way in its Final Decision.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 16–17. Petitioner also asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 16. Dr. Stern’s testimony supports Petitioner’s assertions. See Ex. 1002 ¶¶ 30–32. For purposes of the Preliminary Response, Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7 (quoting Pet. 165 [read: 16]–17). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as it is consistent with the level of skill shown in the ’058 patent and the asserted prior art.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,246,058 - PTAB · Jan 8, 2024 · IPR2023-01110 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR of claims 1–5 on all petitioned grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5 in the ’058 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“C. Motion for Joinder and Consolidation Petitioner moves for joinder to and consolidation with related IPR proceeding IPR2023-00222 under 35 U.S.C. § 315 and 37 C.F.R. § 42.122(b). Paper 3 (Motion for Joinder). IPR proceeding IPR2023-00222 has been terminated due to settlement. See IPR2023-00222, Paper 13. Thus, there is no proceeding with which to join the present case. Accordingly, Petitioner’s motion for joinder and consolidation is denied.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 16–17. Petitioner also asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 16. Dr. Stern’s testimony supports Petitioner’s assertions. See Ex. 1002 ¶¶ 30–32. For purposes of the Preliminary Response, Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7 (quoting Pet. 165 [read: 16]–17). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as it is consistent with the level of skill shown in the ’058 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The analysis below, however, discusses the meaning of “noise” as recited in claim 1. See supra §§ E.1.i. & F.1.e. In particular, at this stage and on this record, we disagree with Patent Owner’s arguments in claim 1 because we determine that the claim 1 sets the boundary for what is considered “noise” for the reasons discussed below. See id. During trial, the parties are invited to address whether the Board should read the claim in this way in its Final Decision.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,246,058 - Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01153 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 30, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed 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). The parties submit that no claim construction is necessary. Pet. 23; Prelim. Resp. 6. Therefore, we do not construe the claims. D.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01134 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that 7 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 29, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 23–24 (citing Stern Decl. ¶¶ 27–28). Patent Owner utilizes Petitioner’s proposed level of skill in the art “[f]or the purposes of this Preliminary Response only.” Prelim. Resp. 7. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357
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.