- Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01476 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of review of claims 3, 6, 7, 12, and 13, exercising § 314(a) discretion under Fintiv after balancing the parallel litigation factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prejudice to renewal if the PTAB institutes IPR review.” Ex. 2023, 6. A stay denial without prejudice to renew if a PTAB trial is instituted “usually weigh[s] against exercising authority to deny institution.” Fintiv, Paper 11 at 7. But “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay.” Id. Although the District Court denied a stay pending the Board’s decision, the court also identified the proximity of the trial date and litigation investment as significant factors in its initial denial of the requested stay. See Ex. 2023, 6. Thus the evidence is inconclusive as to whether or not the District Court would stay the case if we granted institution at this time. Absent a clear indication from the District Court, we decline to predict whether a stay would be granted.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 171 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 24, 33–36. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the housing so that it does not detect vibrations from outside the housing. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundOther
“Likewise, we find a significant weakness in Petitioner’s argument for a reasonable expectation of success in the combination. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Claim 1 requires “said sensor being in a fixed position portion” that “set[s] a rigid position of said sensor relative to said mounting surface” (limitation 1e). As discussed above, neither Murakoshi nor Stewart appear to teach a sensor in a fixed position relative to said engagement means or a rigid position relative to said mounting portion. Accordingly, even if Murakoshi’s and Stewart’s teachings were to be combined, the combined teachings would not appear to meet the limitations of the claimed invention.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01475 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of IPR challenging claims 1, 2, 4, 5, and 8–11, exercising its discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Fintiv, Paper 11; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 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. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“vibrations on a surface and using the vibrations to generate a control signal for a device. Ex. 1004 ¶¶ 21, 25, 29, 30, 36. To measure vibrations on a surface, Murakoshi’s sensor must be fixed within the housing and held in position relative to the surface. See Ex. 1003 ¶¶ 142 (“it is necessary to hold a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 174 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 23, 31–35. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We find Petitioner’s argument based on the combination of Li and iFixit to be a closer call than the argument based on Murakoshi and Stewart. However, because we exercise our discretion to deny the Petition in view of the parallel litigation, we need not determine whether Petitioner meets the standard for institution based on the combination of Li and iFixit.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution 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 Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19
- Parallel petitionsNot reached
“patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01368 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of inter partes review of claims 1–9 under § 314(a), finding the Fintiv factors holistically favored discretionary denial.
RulingsInstitution decision- Parallel petitionsNot reached
“Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 42 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Petitioner responds that its “ranking and explanation was at least implicitly included in the Petition.” Prelim. Reply 4. According to Petitioner, the IPR2024-01369 petition “covers all of the claims identified in Patent Owner’s Infringement Contentions” in the parallel district court proceeding. Id. at 4–5. Thus, the present Petition “ranks second, because it covers claims that have not been asserted against Petitioner in the [parallel district court proceeding].” Id. at 5. Petitioner also notes that the claims asserted in this proceeding “focus on the perspective of a server or access point,” whereas the claims in IPR2024-01369 are from the perspective of an end device. Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, it is highly likely that issues bearing on the patentability of the challenged claims will be considered and resolved before we would issue a final written decision. Thus, we determine that the second factor weighs heavily in favor of discretionary denial of the Petition.” slip op. at 12
Discretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,694,384 - PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Feb 4, 2025 · IPR2024-01144 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because AT&T failed to show a reasonable likelihood that claims 1–22 were obvious over either Nokia and the 3GPP-Standard or Ericsson and the 3GPP-Standard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any responses thereto shows “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). Taking into account Innovative Sonic’s Preliminary Response, AT&T’s Preliminary Reply, and Innovative Sonic’s Preliminary Sur-reply, we conclude that the information 1 We do not reach whether we should exercise our discretion to deny the Petition under Fintiv because, as we explain below, we deny the Petition based on the merits. See infra Sections II.B.5 and II.C.1. presented in the Petition does not establish that there is a reasonable likelihood that AT&T would prevail in demonstrating at least one of claims 1–22 of the ’489 patent is unpatentable. We, therefore, deny AT&T’s Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the testimony of Dr. Hansen, AT&T argues the following: [a]s of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’489 patent . . . would have had a [Bachelor of Science] in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A [person of ordinary skill in the art] would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. More education may supplement practical experience or vice versa. Pet. 14 (citing Ex. 1002 ¶ 368). In the Preliminary Response, Innovative Sonic does not address AT&T’s assessment of the level of skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt AT&T’s uncontested assessment of the level of skill in the art because it is consistent with the ’489 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“issue fares no better. With one exception, Dr. Hansen, relies on the same disclosures of the Update for 3GPP TS 36.331 v.9.4.0 to support his testimony, which, as we explain above, does not account for the plain language of the disputed limitation. Compare Pet. 26–27, 43, with Ex. 1002 ¶¶ 87–90. In addition, Dr. Hansen testifies that a person of ordinary skill in the art would have understood that “the E-UTRAN configuring the UE with one or more SCells would necessarily include the configuring of at least one SCell by a source eNB to a UE.” Ex. 1002 ¶ 91 (emphasis added). But neither AT&T nor Dr. Hansen establish inherency in its obviousness analysis. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194– 95 (Fed Cir. 2014) (recognizing that “inherency may supply a missing claim limitation in an obviousness analysis,” but limiting the doctrine of inherency “only when the limitation at issue is the ‘natural result’ of the combination of prior art elements” (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Apart from the conclusory assertion above, Dr. Hansen does not identify sufficient evidentiary support demonstrating that the requirement identically recited in each of independent claims 1 and 12 of “configuring at least one SCell by a source eNB to a User Equipment (UE)” would have been the “natural result” flowing from the Update for 3GPP TS 36.331 v.9.4.0’s disclosure of the E-UTRAN configuring the UE with at least one SCell. PAR Pharm., 773 F.3d at 1195. Accordingly, we do not credit Dr. Hansen’s testimony that implicates the doctrine of inherency because it not supported by evidence of record.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, AT&T contends that “the Board does not need to expressly construe any [claim] terms to resolve the arguments presented herein” because the asserted prior art “discloses all limitations under any plausible construction.” Pet. 14 (citing Ex. 1002 (Declaration of Dr. Christopher Hansen) ¶ 456). In the Preliminary Response, Innovative Sonic “agrees with [AT&T] that no [claim] term needs to be construed.” Prelim. Resp. 4 (citing Pet. 14). For purposes of this Decision, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. 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 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,237,489 - PTAB · Jan 28, 2025 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims and all four grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We begin our analysis with independent claim 1. Considering these factors, we preliminarily determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable as obvious over Zhang, Fillebrown, and Pasanen, for the reasons explained below.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that limitation 1c is taught by the combination of Zhang with Fillebrown. Pet. 18. Petitioner identifies Zhang’s teaching of transmitting commands and media content from the mobile device to helper servers via a wireless network, WLAN. Pet. 16–18 (citing Ex. 1004, 3:25– 60, 4:1–8, 4:32–50, 7:1–14, 8:13–22; Ex. 1003 ¶¶ 103, 104, 114–118). Acknowledging that Zhang does not expressly teach an intermediate routing device, Petitioner identifies Fillebrown’s intermediate wireless router (wireless router 120) for providing network range extension by amplifying routed signals. Id. at 19–22 (citing Ex. 1005 ¶¶ 16, 34, 49, 51, 57, 61). Petitioner contends a POSITA would have been motivated to modify Zhang to route data via an intermediate wireless router pursuant to Fillebrown to provide network range extension, and that such a modification would have had a reasonable expectation of success because Zhang and Fillebrown teach the same network setup (i.e., WLAN using a wireless protocol/standard such as IEEE 802.11 or Home RF). Pet. 22–23 (citing Ex. 1003 ¶¶ 109–111)” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 4; see generally Prelim Resp. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We preliminarily disagree with Patent Owner. Although the claim lists step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Nothing in the express claim language precludes performing step 1d before step 1b, as in Zhang. For example, the claim does not contain temporal terms, like “then” or “next,” nor does the claim otherwise specify that step 1b must precede step 1d. Although Patent Owner points out that a term of step 1d (i.e., the one more available devices) derives antecedent basis from text in step 1b (i.e., one more available devices), this alone does not directly or implicitly require performing step 1b before step 1d. Prelim Resp. 6–7 (citing Ex. 1002, 240, ’648 patent prosecution history). Nor does the Specification require performing the step of identifying devices as available before the step of wirelessly signaling those devices or even that the steps be mutually exclusive. For example, there are no statements that this step order is important, nor disclaimer of any other order, nor any prosecution history indicating a surrender of any other order. Moreover, according to the Specification, announcer 30, which is the component that identifies devices as available prior to the wirelessly signaling, is only “preferably provided.” Ex. 1001, 7:28–31. Even assuming Patent Owner were correct that step 1b must precede step 1d, Patent Owner’s position that device(s) must be identified as available does not appear to be commensurate with the claims. According to its plain meaning, limitation 1b does not appear to require identifying devices as available; the claim merely requires identifying “available devices.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In other words, the claim does not appear to require identifying (i.e., determining) whether devices are available but merely requires identifying devices that happen to be available. According to our preliminary understanding, Zhang’s mobile device 1) discovers (identifies) connected available and unavailable helper servers, and then 2) sends (wirelessly signals) service requests to compatible available and unavailable helper servers. Ex. 1004, 3:44–4:8, 6:51–7:13. Thus, Zhang identifies and then wirelessly signals available devices (Zhang also identifies and then wirelessly signals unavailable devices). As such, we preliminary determine that Zhang meets the claim language “identifying one or more available devices” and “wirelessly signaling the one or more available devices.”” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,547,648 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 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, ¶ 48. 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. 20–21. 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 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly 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 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868 - 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
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