• Cisco Systems, Inc. v. Umbra Technologies Ltd.No claims unpatentable
  PTAB · Aug 28, 2025 · IPR2024-00270 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 15–20 were not shown unpatentable because Hankins did not teach limitation 15.3; claims 1–14 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposal of the level of ordinary skill in the art. PO Resp. 6. Petitioner’s proposal is supported by the Reddy Declaration and is consistent with the ’595 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation in our obviousness evaluation below.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction Beyond plain and ordinary meaning, Petitioner does not propose any term for claim construction. Pet. 13. Patent Owner does not argue any claim construction issue. See generally PO Resp. The argument and evidence provided by the parties regarding limitation 15.3 is dispositive. See Section II.E. below. Our analysis of limitation 15.3 does not turn on any claim construction question. Id. Accordingly, we do not need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We apply the plain and ordinary meaning of all claim terms, as would have been understood by a person of ordinary skill in the art, in the context of the ’595 patent.” slip op. at 14

  • Adverse judgmentAdverse judgmentOther

    “D. Claims 1–14 as Obvious Over Kommula As already noted, Patent Owner has disclaimed claims 1–14. Ex. 3001. We do not analyze claims 1–14 as the challenge is mooted by the filing of the Statutory Disclaimer.” slip op. at 15

  • BurdenNot shown unpatentable

    “350 receiving a request for a listing of “services” from a gateway device and provisioning one or more tunnel servers has not been shown to teach generating “a list of available servers.” There is no persuasive evidence to support Petitioner’s assertion. Petitioner relies on unsupported argument because, at best, Hankins discloses gateway devices 311 and 321, each of which is located in different logical broadcast domains, requesting services from one another. Ex. 1005, 12:9–16. This particular disclosure, however, does not appear to implicate the functionality of Hankins’s controller 350, much less result in controller 350 generating a list of available tunnel servers that would allow gateway devices 311 and 312 to exchange a listing of “services” therebetween. Petitioner’s reliance on Hankins’s controller 350 provisioning additional tunnel servers both to improve performance and without human intervention fares no better. Ex. 1005, 25:45–55. There is no indication in Hankins that this provisioning performed by controller 350 is done in response to receiving a request for a list of available tunnel servers from either gateway device 311 or 312.” slip op. at 20

  Patent outcomesUS 11,108,595 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,108,595
• Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded 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). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted

    “Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25

  Patent outcomesUS 8,898,494 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,898,494
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,448,430
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,594,443
• Amazon.Com, Inc. / Amazon Web Services, Inc. v. Swarm Technology LLCNo claims unpatentable
  PTAB · Aug 28, 2023 · IPR2022-00633 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because Lurie, alone or combined with the other cited references, did not teach proactive task retrieval; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Based on the fully developed trial record, we apply the ordinary and customary meaning of the claim term “proactively” and, therefore, we construe this claim term as initiating change rather than reacting to events (i.e., not being told to act or not reactionary). Beginning with the intrinsic evidence, both parties appear to agree that the ’275 patent does not define the claim term “proactively” with reasonable clarity, deliberateness, and precision. For example, during the oral hearing, counsel for Amazon indicated that the specification of the ’275 patent provides “some examples” of what it means to act “proactively,” but it does not provide a lexicographic definition. See Tr. 7:8–11:21. In the same vein, during oral argument, counsel for Swarm stated that “[w]e haven’t advocated for anything other than the plain and ordinary meaning of proactively.” Id. at 34:23–24. We” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Petition, Amazon argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or a related field, and about five years of industry or academic research experience in parallel or distributed computing, system architecture, or an equivalent.” Pet. 4–5 (citing Ex. 1003 ¶¶ 42–44). Amazon further argues that “[a] post-graduate degree or additional formal education can compensate for less experience, and vice-versa.” Id. In its Patent Owner Response, Swarm does not address the level of skill in the art. See PO Resp. Accordingly, based on the fully developed trial record, we maintain our preliminary determination regarding the level of ordinary skill in the art. Dec. on Inst. 10–11. That is, we adopt Amazon’s proposed assessment of the level of ordinary skill in the art because it is consistent with the ’275 patent and the asserted prior art. We apply this assessment of the level of ordinary skill in the art in our obviousness evaluations below.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Amazon’s declarant, Dr. Lowenthal, provides testimony that supports our finding above. In his supplemental declaration in support of the Reply, Dr. Lowenthal testifies that, “[c]ertainly, Lurie initially sends an initial notification of ‘one or more tasks . . . becoming available.’ After that, . . . TCW [270] will obtain and process a first task.” Ex. 1040 ¶ 58 (quoting Ex. 1007 ¶ 86) (citing Ex. 1007 ¶¶ 87, 88) (second two alterations in original). He also testifies that the “one initial notification . . . kick[s] off the procedure” because it “informs all registered TCWs [270] that one or more tasks are available.” Id. ¶ 59. We credit the aforementioned testimony of Dr. Lowenthal’s because it is consistent with the disclosures in Lurie that we highlight above, most notably the kickoff notification.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “As we explain in the claim construction section above, we accord the claim term “proactively” an ordinary and customary meaning of initiating change rather than reacting to events (i.e., not being told to act or not reactionary). See supra Section II.A. Contrary to our construction, Lurie’s TCW 270 only takes a task after receiving a kickoff notification and, therefore, it is not acting proactively. That is, Lurie’s TCW 270 reacts to the kickoff notification that a task is available or otherwise appears in object exchange repository 662 rather than initiates change by seeking a task from object exchange repository 662 without being notified to do so.” slip op. at 30

  Patent outcomesUS 10,592,275 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,592,275
• Juniper Networks, Inc. v. Swarm Technology LLCNo claims unpatentable
  PTAB · Apr 26, 2023 · IPR2022-00141 · APJ Michael R Zecher · IPR · Final written decision

  Juniper failed to show claims 1–7 and 9–17 unpatentable under any asserted obviousness ground because the combinations did not teach adding a co-processor without any communication with the controller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Petition, Juniper argues that a person of ordinary skill in the art “would’ve had at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of parallel or distributed processing systems.” Pet. 11. Juniper further argues that a person of ordinary skill in the art could, alternatively, “have a master’s degree or similar post-graduate work in computer science, electrical engineering, computer engineering, or a closely related field, and less design and development experience.” Id. (citing Ex. 1003 ¶¶ 60, 61). In its Patent Owner Response, Swarm appears to agree with Juniper because it repeats verbatim the same assessment of the level of ordinary skill in the art offered by Juniper in its Petition. Compare PO Resp. 11, with Pet. 11. Accordingly, based on the fully developed trial record, we maintain our preliminary determination regarding the level of ordinary skill in the art. Dec. on Inst. 10. That is, we adopt Juniper’s proposed formulation of the level of ordinary skill in the art, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound and, therefore, precludes a meaningful indication of the level of ordinary skill in the art. We apply this modified version of the level of ordinary skill in the art in our obviousness evaluations below.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In any event, even if we were to consider Juniper’s downstream theory, we do not find this belated argument persuasive. To support its downstream theory, Juniper relies on the Dr. Weissman’s testimony that “[t]echniques for avoiding [broadcast packets flooding the network] are well known in the art and may include downstream devices dropping, or filtering, broadcast packets to minimize processing load.” Ex. 1031 ¶ 36. We decline to credit this testimony for two reasons. First, apart from generically asserting that dropping or filtering broadcast packets minimizes processing load, Dr. Weissman does not attempt to explain how Leong’s surveying unit would be considered a “downstream device” from a newly added co-processor, much less why Leong’s surveying unit would need to filter or drop a broadcast packet sent by the newly added co-processor. Second, Dr. Weissman does not cite to any underlying evidence to support his testimony. See 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.”).” slip op. at 32

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In any event, we need not construe any of the sixteen claim terms identified by Swarm in its Patent Owner Response because, when evaluating the merits of Juniper’s Petition in light of the arguments and evidence presented by Swarm during trial, the scope and meaning of the sixteen claim terms are not in controversy. Accordingly, it is not necessary to reach those particular issues for purposes of deciding whether Juniper has met its burden of demonstrating by a preponderance of the evidence that the challenged claims are unpatentable. See, e.g., 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))). In our obviousness evaluation below, we address the scope and meaning of the claim term “communication,” as this term pertains to the combined teachings of Leong and AppleTalkBook contested by the parties. More specifically, we address below whether Juniper’s proposed combination of Leong and AppleTalkBook teaches or suggests adding a coprocesser “on a plug-and-play basis without any communication with the controller,” as recited in each of independent claims 1, 6, and 11 of the ’275 patent.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We begin our analysis with the plain language of independent claims 1, 6, and 11. Each of these independent claims explicitly requires adding a co-processor “without any communication with the controller.” Ex. 1001, 14:40–44, 15:30–34, 16:30–34 (emphasis added). As we explained in the Final Written Decision in IPR2021-01445, the use of the word “any” precludes both communication with a response and communication without a response. IPR2021-01445, Paper 62 at 25. Turning to the disclosure in the specification of the ’275 patent cited by Juniper, we do not agree that those disclosures support limiting “communication” to only two-way messaging. The relevant passage in the specification states the following: Each cell 12 [is] configured to perform one or a plurality of specialized tasks, as illustrated in the following sequence of events. During a poll phase each cell periodically sends an agent to the task pool until a matching task is found. To facilitate this matching, both the cell and the task pool may be equipped with a transceiver. In the case of the task pool, the transceiver maybe [sic] located in the task pool itself or in the switching fabric to which the task pool is connected. When a task match is found within a task pool, the task pool transmits an acknowledgement to the cell. The next step is the “communication channel” phase. During the communication channel phase, the cell receives the task and begins to execute the task. In one implementation, once the first task is completed, the communication channel is maintained so that the solidar[it]y cell can fetch another task without having to repeat the “poll” and “acknowledge” phase. Ex. 1001, 6:33–48 (emphases added). We fail to see how each cell 12 transmitting an acknowledgement message during the “poll phase” or each cell 12 receiving a task during the “communication channel” phase implicates adding a co-processor “on a plug-and-play basis,” as required by each of independent claims 1, 6, and 11. Regardless, we do not view the cited disclosure in the specification as limiting the “communication” required by these independent claims to only two-way messaging. Instead, we view the cited disclosure as merely examples of how each cell 12 may communicate with the task pool. The U.S. Court of Appeal for the Federal Circuit “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. CitrixOnline, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). Stated differently, these two examples of transmitting an acknowledgment message and receiving a task in the specification, by themselves, are not enough to prevent a broad interpretation of “communication” that includes, among other things, one-way messaging that does not require a response.” slip op. at 27

  Patent outcomesUS 10,592,275 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,592,275
• Juniper Networks, Inc. v. Swarm Technology LLCNo claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01445 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–12 were not shown unpatentable on any asserted obviousness ground because the proposed combinations did not teach adding a co-processor without communication with the controller.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Both Petitioner and Patent Owner argue that a person having ordinary skill in the art “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of parallel or distributed processing systems.” Pet. 11; see also PO Resp. 7. The parties alternatively argue that a person having ordinary skill in the art “would have a master’s degree or similar post-graduate work in computer science, electrical engineering, computer engineering, or a closely related field, and less design and development experience.” Pet. 11 (citing. Ex. 1003 ¶¶ 62– 67); see also PO Resp. 7. We adopt the parties’ proposed formulation of the level of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that “[f]or the purposes of this proceeding, Petitioner construes all terms as having their ordinary and customary meanings.” Pet. 11–12. Patent Owner does not address claim construction. See PO Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • ExcludeDenied

    “37 C.F.R. § 42.64(b)(1), (b)(2), (c)). Specifically, we stated that “[p]rovided that Patent Owner timely objects to the admissibility of Petitioner’s evidence in accordance with our regulations, we will address such objection at the procedurally appropriate time.” Id. Despite our reminding the parties of the proper procedure for challenging the admissibility of evidence, Patent Owner elected not to do so. Specifically, Patent Owner did not file a timely objection, thereby giving Petitioner an opportunity to supply supplemental evidence to cure the objection. See Pet. Reply 28. Accordingly, Patent Owner forfeited its right to object to evidence, such as AppleTalkBook and Dr. Hall-Ellis’ testimony, and, as a result, forfeited its request that we exclude the evidence. Instead of following our rules and filing a timely objection, Patent Owner argues in the Response, citing the Federal Rules of Evidence, that we should give limited weight to AppleTalkBook and Dr. Hall-Ellis’ testimony due to a lack of authenticity. See PO Resp. 8–15. But this is no more than a disguised motion to exclude evidence. Under these circumstances where Patent Owner’s argument is premised on the Federal Rules of Evidence, we see no meaningful difference between excluding the evidence and giving it little weight. Because Petitioner did not file a timely objection to the evidence, we deny Patent Owner’s request to give AppleTalkBook and Dr. Hall-Ellis’ testimony limited weight.” slip op. at 13

  • Expert testimonyPetitioner expert discountedOther

    “We have reviewed the specific examples cited in Patent Owner’s Response. Even if the specific examples cited by Patent Owner were valid complaints, none of them, either alone or in combination, arise to such a level that we would discount the entirety of Dr. Weissman’s testimony. That does not mean that we found all of the testimony in this proceeding, whether provided by Dr. Weissman or Dr. Nelson, credible. In judging the credibility of experts, we focus on whether the witness offers corroboration and provides opinions that are consistent with the prior art, and the witness’ cross-examination testimony. In our obviousness analysis below, we specially identify the relevant testimony provided by the parties’ declarants that we find to be credible and not credible.” slip op. at 14

  Patent outcomesUS 9,852,004 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,852,004
• Mediatek Inc. / Mediatek USA, Inc. v. Nippon Telegraph And Telephone CorporationNo claims unpatentable
  PTAB · Feb 3, 2022 · IPR2020-01404 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable; the asserted obviousness combinations failed to teach or motivate the claimed mandatory-channel operation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner alleges a person having ordinary skill in the art “would have had at least a B.S. in Electrical Engineering, or the equivalent, and 3–4 years of experience designing wireless packet communication devices, including 802.11-compliant devices. More education could substitute for less experience, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 27–31). Patent Owner accepted Petitioner’s proposal in its Preliminary Response but does not take a position in its Response. See Paper 8, 4 fn.3. On this record, we adopt Petitioner’s proposal, which is consistent with the prior art of record.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “meaning “one channel in a wireless multichannel communication system over which transmission must occur before transmission over the other wireless channels.” Inst. Dec. 21. Patent Owner argues the construction should be modified by substituting “whose idle state determines whether there can be a transmission” for “over which transmission must occur before transmission.” PO Resp. 1 n.1, 11–12. Patent Owner otherwise agrees with the preliminary construction. Id. at 1–2. We modify our preliminary construction of “mandatory channel” and adopt Patent Owner’s proposed construction of “mandatory channel.” We respond to Petitioner’s arguments against adoption of Patent Owner’s construction below. We therefore determine that “mandatory channel” means “one channel in a wireless multichannel communication system whose idle state determines whether there can be a transmission over the other wireless channels.”” slip op. at 10

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “In considering the “appropriate weight” to give a prior construction we look at “the similarities between the record in the district court or the ITC and the record before the Board”; “whether the prior claim construction is final or interlocutory”; “whether the terms construed by the district court or ITC are necessary to deciding the issues before it”; and “the facts and circumstances of each case.” Patent Trial and Appeal Board Consolidated Trial Practice Guide at 47 (Nov. 2019), https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. The briefing of the parties in the District Court suggests the evidence was substantially the same as here. See, e.g., Ex. 1056,8 14–17 (citing Shpak (Ex. 1005 here); Geier Declaration (Ex. 2005 here); Ex. 10589). The District Court’s Claim Construction Order states the construction is “final.” See Ex. 1055, 1 (“final construction”). Trial was set 8 ’632 Lawsuit, Plaintiffs’ Opening Claim Construction Brief, Dkt. 37. 9 ’632 Lawsuit, Transcript of Markman Hearing, February 4, 2021. for January 10, 2022, but the case was reassigned and an Order Resetting Schedule entered January 12, 2022, setting a pretrial for May 19, 2022, and a jury trial for June 13, 2022. ’632 Lawsuit, ECF No. 89; see also Inst. Dec. 42 (ordering the parties to advise us of “the setting of a trial date”). The construction could change as the record is further developed at trial. As to the necessity for construction, the District Court did construe “mandatory channel.” We disagree with Petitioner that the District Court “explicitly rejected [Patent Owner’s] contention that ‘mandatory channel’ limits the claims to multichannel systems.” Reply 19 (citing Ex. 1056, 14–17; Ex. 1057,10 7–9; Ex. 1058, 21:3–30:24); see Section III.C.1.c below. Petitioner argues the District Court construction is inconsistent with our preliminary construction. Id. at 19–20 (citing Inst. Dec. 21 (“Further, the ‘mandatory channel’ may be the only channel used and still be within the scope of the claims.”); Ex. 1055, 4 (“The Court found ‘mandatory channel’ may be the only channel . . . .”)). As shown in the italicized language above from each construction, we are not persuaded there is an inconsistency.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “c. “single wireless channel” In the Institution Decision we preliminarily found the preamble is limiting. Inst. Dec. 19. Neither party argues the preamble is not limiting, and for purposes of this Decision we maintain our finding that the preamble is limiting. 12” slip op. at 14

  Patent outcomesUS 7,280,551 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,280,551
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• Netflix, Inc. / Comcast Cable Communications, LLC v. Realtime Adaptive Streaming LLCNo claims unpatentable
  PTAB · May 27, 2020 · IPR2019-01280 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 24, 26, 27, 29–32, 34, and 35 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but rather adopts it “[f]or purposes of this IPR proceeding.” PO Resp. 8. Dr. Zeger also adopts Petitioner’s definition of a person of ordinary skill in the art for his analysis. Ex. 2001 ¶ 26. Based on our review of the ’046 patent, the types of problems and solutions described in the ’046 patent and cited prior art, and the testimony of Dr. Storer and Dr. Zeger, we find that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in data compression, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in data compression.”” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Our review does not identify any term whose construction is necessary to our analysis. Accordingly, we decline to construe any claim terms of the ’046 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Even though a person of ordinary skill in the art could have applied the teachings of Couwenhoven to Imai’s system, we find Petitioner’s position lacking insofar as it fails to explain how Couwenhoven’s additional steps of monitoring of a rate buffer in relation to fill thresholds for an output buffer create a tighter feedback loop and why a person of ordinary skill in the art would forego the explicit teachings of Imai. Given Imai’s express teaching of controlling the rate of compression and providing its own method of doing so, we do not agree with Petitioner’s position that a person of ordinary skill would have been motivated to turn to Couwenhoven’s monitoring of a rate buffer in relation to fill thresholds for an output buffer for use with Imai’s system. Based on the entirety of the record, we find Petitioner does not provide sufficient rationale for why a person of skill in the art would have combined the teachings from the cited prior art to arrive at the inventions recited in the challenged claims. Accordingly, for this additional reason, we determine Petitioner has not established by a preponderance of the evidence that claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 26, 27, 29–32, 34, and 35 would have been obvious under 35 U.S.C. § 103 in view of Imai and Couwenhoven.” slip op. at 34

  Patent outcomesUS 7,386,046 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,386,046

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.