- PTAB · Jan 27, 2025 · IPR2024-01121 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution under Fintiv, finding that the parallel district court proceedings would likely address patentability before a final written decision and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In Fintiv, the Board explained that “cases addressing earlier trial dates as a basis for denial under NHK Spring have sought to balance considerations such as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5. Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors consider the following: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Claim Construction In interpreting the claims of the ’402 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties each contend that resolution of this proceeding does not require that the meaning of any claim term be made explicit. See Pet. 15; Prelim. Resp. 8. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“1. Level of Ordinary Skill As part of our compelling-merits analysis, we consider the level of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). Petitioner proposes the following: [A] person of ordinary skill in the art at the time of the alleged invention of the ’402 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 73. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 21–22. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 17
- BurdenNot reached
“outset, we note that the language of claims 1 and 12 is clear in reciting the presence of two distinct signals, i.e., a control signal and a reference signal, and that it is the control signal that “triggers” transmission of the reference signal. See Ex. 1001, 14:5–6, 60–62. Patent Owner credibly argues that the “two-step embodiment” of Figure 10 of the ’402 patent, and in particular steps 1005 and 1010, describe the control and reference signal transmissions that are encompassed by claims 1 and 12. See Prelim. Resp 8–10. Patent Owner also credibly argues that the Figure 10 embodiment is distinct from other disclosed embodiments, including the “single-step embodiment” of Figure 8. See id. at 10–11. Patent Owner further explains reasonably that the content of column 6 of the ’402 patent on which Petitioner relies has a more “natural reading” in distinguishing between separate transmission of a “control signal” that “triggers” separate transmission of a “reference signal” as described in connection with Figure 10 as juxtaposed with transmission of a “control channel,” which is distinct from a control signal, and a “reference signal” that may constitute a single transmission, as is described in conjunction with Figure 8. See id. at 16–17. It logically follows that if, as Patent Owner credibly argues, the claims of the ’402 patent do encompass the latter transmission scheme, rather than the former, then Petitioner’s reliance on Moon, as presented in its Petition, is insufficient to account for those claims. On this record, we need not decide whether Petitioner would likely prevail on the above-noted issues as Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. Because, as noted above, Patent Owner has identified potentially dispositive gaps or flaws in Petitioner’s apprehension as to what is adequate in Moon’s disclosure to account for the claims of the ’402 patent, Petitioner’s proposed grounds cannot be said to rise to the level of a “compelling” meritorious challenge.” slip op. at 22
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,148,402 - Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution deniedPTAB · Jan 27, 2025 · IPR2024-01050 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–3, 9, and 24 would have been obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Considering the above principles, we determine that Petitioner has not shown a reasonable likelihood that any of the challenged claims would have been obvious over Chihara, BluetoothSpec, Everett, and Chang, for the reasons explained below.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent owner contends that a person of ordinary skill “would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a related field in computing technology, and at least two years’ experience in wireless communication and mobile devices including multimedia streaming, or equivalent education, research, experience, and knowledge.” Prelim. Resp. 2–3. In other words, Patent Owner argues that the person of ordinary skill would have had less education and more specific experience with mobile devices, including multimedia streaming, than Petitioner proposes. Because Petitioner’s argument is supported by declaratory testimony, and Patent Owner does not provide supporting evidence for its argument, we adopt Petitioner’s articulation of the level of ordinary skill in the art. See Ex. 1003, ¶ 29 (citing Ex. 1001, 1:16–20, 4:18–55, 11:61–12:11).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “mobile communication device is receiving rerouted data from surrounding equipment, rather than rerouting data to surrounding equipment.” Pet. 19. This is in accord with the specification of the ’990 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1001, 7:15–17 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no evidence to justify such a 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’990 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 1, which requires the streaming device (phone 11B) to indicate its availability to receive rerouted data from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,969,990 - Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution deniedPTAB · Jan 27, 2025 · IPR2024-01049 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 22–24 would have been obvious over Chihara, BluetoothSpec, Everett, and Chang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review. CONCLUSION For the reasons above, Petitioner has not shown that there is a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’866 patent is unpatentable. Therefore, we deny the Petition. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “streaming device is receiving rerouted data from surrounding media handling devices, rather than rerouting data to surrounding media handling devices.” Pet. 19–20. This is in accord with the specification of the ’866 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1038, 7:22– 24 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). evidence to justify such a departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’866 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives streaming or media data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted streaming data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 22, which requires the streaming device (phone 11B) to indicate its availability to receive streaming data rerouted from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,866 - PTAB · Jan 24, 2025 · IPR2024-01145 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 7–11 were unpatentable on any of four proposed grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2024).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying upon the testimony of its declarant Dr. Christopher Hansen, Petitioner argues the following: As of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’559 Patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In addition to the above information, it would be beneficial for the macro eNB to send a measurement gap configuration (as dis-cussed in 3GPP TS 36.331 V1.1.2.0) allocated for the UE to the Small cell eNB so that the Small cell eNB could take measure-ment gaps into consideration when scheduling resources to the UE. For example, the small cell eNB could avoid scheduling the UE during measurement gaps because the UE cannot transmit or receive any signal to/from the Small cell during the measurement gaps. Ex. 1001, 6:41–49 (emphasis added). We particularly note the literal written description support (in italics) in the ’559 Patent that mirrors the claim [1e] language: “so that the Small cell eNB could take measurement gaps into consideration when scheduling resources to the UE.” Id. at 6:45–46 (emphasis added). Moreover, as noted above, Figure 5 of the ’559 Patent depicts flow chart 500. Prelim. Resp. 3–4 (citing Ex. 1001, 6:65–7:3). And step 525 of Figure 5 affirmatively describes: “The second eNB receives the measurement gap configuration from the first eNB, and takes the measurement gap configuration into consideration when scheduling resources to the UE.” Id. at Fig. 5, step 525 (emphasis added).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“cites to Advanced Display Systems Inc. v. Kent State University (212 F.3d 1272, 1281–1282 (Fed. Cir. 2000)), which sets forth the doctrine of incorporation by reference that provides a mechanism to include as a matter of law in one document the disclosure of another document. As explained by the court in Advanced Display Systems, the requirements for an effective incorporation by reference are as follows: To incorporate material by reference, the host document must identify with detailed particularity what specific material it in-corporates and clearly indicate where that material is found in the 10 We note Exhibit 1014 is the Declaration of Craig Bishop, a second declaration relied upon by Petitioner, that is generally directed to the nature, purpose, dates, and public accessibility of the 3GPP TS.331 Exhibits 1008, 1009, and 1015. See e.g., Ex. 1014 ¶¶ 65–67. This is in addition to Exhibit 1003, which is the Declaration of Dr. Hansen, for Petitioner. We have considered both declarations, to the extent relied upon by Petitioner. USPQ 144, 146 (CCPA 1973) (providing that incorporation by reference requires a statement “clearly identifying the subject matter which is incorporated and where it is to be found”); In re Saunders, . . . 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation is ap-propriate only if one reference “expressly incorporates a particu-lar part” of another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to material in an earlier ap-plication in order [to] have that material considered part of a later application). Advanced Display Systems, 212 F.3d at 1281–1282 (emphasis added). Here, we find Petitioner has not persuasively shown how Centonza expressly incorporates a particular part of the TS 36.331 reference by: (1) identifying with detailed particularity what specific material it incorporates, and (2) clearly indicating where that material is found in the TS 36.331 document. Pet. 33; Exhibits 1008, 1009.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,560,559 - PTAB · Dec 16, 2024 · IPR2024-00997 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–10, exercising its discretion under § 314(a) because the Fintiv factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review 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 also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in design, development, and/or testing of cellular networks.” Pet. 15–16 (citing Ex. 1003 ¶¶ 43–44). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties argue that we need not address any claim-construction issues for our analysis, and we agree. See Pet. 15; Prelim. Resp. 25. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,798,754 - PTAB · Dec 16, 2024 · IPR2024-00992 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution on claims 1–4, 6–9, 11–14, 16–19, and 21–23 under Fintiv because the parallel trial was likely to precede the final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“that “[t]he Board should deny institution under 35 U.S.C. § 314(a) because all six Fintiv factors favor discretionary denial.” Prelim. Resp. 70–71 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). For the reasons below, we agree with Patent Owner, and we disagree with Petitioner that the Petition presents a compelling, meritorious challenge.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in research, design, development, and/or testing of cellular networks.” Pet. 12 (citing Ex. 1003 ¶¶ 44–45). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 16
- BurdenNot reached
“Although we need not decide which side would likely prevail on these issues, Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. The ground based on Nogami does not simply rely on Nogami’s plain disclosure, but also relies on expert testimony as to how a person of ordinary skill in the art would have understood Nogami’s disclosure based on the background knowledge in the art. Thus, Petitioner has not, on the preliminary record, presented a compelling meritorious challenge to claim 1 and its related claims.” slip op. at 19
Discretionary denialcites Phillips · GrahamPatents in suitUS 10,951,359 - PTAB · Dec 13, 2024 · IPR2024-00899 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–5 and 10–15, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’892 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“advancements that it contends were made before the filing of the ’982 patent that made it easier for an ordinarily skilled artisan to take advantage of known energy savings by incorporating the direct transitions of Röger into G.987.3. Pet. 12–14. These arguments are supported by expert testimony, which in turn has non-testimonial evidentiary support. Id.; Ex. 1003 ¶¶ 70– 74; Ex. 1011, 3–4; Ex. 1006, 5–7. Patent Owner’s contrary argument is supported by expert testimony, but that expert testimony does not cite non-testimonial evidentiary support and is conclusory regarding why the advancements would not motivate an ordinarily skilled artisan to modify G.987.3. Prelim. Resp. 26–27; Ex. 2001 ¶ 51. Thus, on the current record, Petitioner’s argument regarding the motivation resulting from technology advances is more persuasive. At trial, however, additional exposition could be beneficial on the issues of technology advances, their effects on an ordinarily skilled artisan’s motivation, and energy reduction.” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Pet. 4–5 (emphasis omitted). Petitioner argues that these means limitations should be construed to be means plus function limitations under 35 U.S.C. § 112(f). Id. Further, Petitioner argues that the corresponding structure for these means limitations is a processor that can execute computer program instructions. Id. at 5. Patent Owner does not propose constructions for these limitations. Prelim. Resp. 14. Because construction of these means limitations is not needed to determine whether to institute trial in this case, we do not construe these limitations for this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not adopt Patent Owner’s proposed construction. Importantly, when the patentee wanted to limit its claims to direct transitions or direction transitioning, it did so expressly. Claims 1, 6, and 10 each expressly recite transitioning directly (Ex. 1001, 15:2–21, 15:40–58; 16:7–31). In addition, it is presumed that “transitioning” in claims 1, 6, and 10 has a consistent meaning with “transition” in claims 12 and 14. “[T]he same terms appearing in different claims in the same patent . . . should have the same meaning ‘unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”’ Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed. Cir. 2006) (quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)); Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[C]laim terms are normally used consistently throughout the patent”); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”); Fin Control, 265 F.3d at 1318 (Fed. Cir. 2001); Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) (“A word or phrase used consistently throughout a claim should be interpreted consistently.”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”). Patent Owner has pointed to nothing in the Specification or the prosecution history that teaches that the terms “transition” in claims 12 and 14 and “transitioning” in claims 1, 6, and 10 should be given inconsistent meanings. Prelim. Resp. 12–14.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,806,892 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–16 and 19.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. Discussion Per 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–16 and 19 in this proceeding, there are no remaining claims in this trial.” slip op. at 2
NonePatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–12 and did not respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–12 in this proceeding, there are no remaining claims in this trial. Because Patent Owner did not respond to the Show Cause Order, we construe Patent Owner’s statutory disclaimer of all challenged claims 1–12 as a request for entry of adverse judgment against Patent Owner. The request is granted.” slip op. at 2
NonePatents in suitUS 6,904,405 - Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,118,602
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.