- Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10
Patent outcomesUS 11,055,583 mixedClaim construction§ 102 anticipationPatents in suitUS 11,055,583 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentablePTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28
Patent outcomesUS 9,426,794 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,426,794 - PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - PTAB · Dec 13, 2024 · IPR2024-00868 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR of claims 1, 2, 4-6, 9-11, 13-15, and 18-20 based on a reasonable likelihood that at least claim 1 is obvious over Trigui.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“weigh this factor as neutral. We do not speculate as to whether a motion to stay would be renewed and ultimately granted. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer . . . how the District Court would rule should a stay be requested by the parties in the parallel case here.”); Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”) (similar).” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“limitations that require specific connections between MIMO transceivers and arrays and a relationship between MIMO transceivers and beams.” Pet. 41. Petitioner contends that “Trigui teaches that each of the two modems (MIMO transceiver) would be connected to one of the two beams from each of the two arrays,” resulting in the interconnection requirements recited in the two “wherein” clauses of limitation [1b]. Id. at 41–42. Petitioner concludes that a person having ordinary skill in the art would have found the interconnection recitations of limitation [1b] obvious. Id. at 48–50; see id. at 48 (providing an annotated version of Trigui’s Figure 10 (modified to include two modems) and depicting the cross-connection of received signals). Petitioner contends that a person having ordinary skill in the art would have been motivated to cross-connect the MIMO transceivers and antenna arrays. Pet. 43; see id. at 42–43 (explaining direct and cross connection options); 44–48 (providing seven reasons why a person having ordinary skill example, Petitioner contends that a direct connection approach “does not take full advantage” of sharing antenna arrays. Id. at 44 (referencing Ex. 1004 ¶¶ 2, 62–63, 72, 79). As another example, Petitioner contends that cross-connecting minimizes the correlation of signals that reduces the capacity of a MIMO system. Id. (referencing Ex. 1006, 473–474; Ex. 1003 ¶¶ 239–240); see also Pet. 44–48 (providing other reasons). Upon review of the information in the Petition and corresponding evidence, including Petitioner’s reasoning in support of its proposed modifications, we determine Petitioner has made a sufficient showing, on the current record, that Trigui teaches or suggests the subject matter of limitation [1b].” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner and Patent Owner that, for the purposes of this Decision, we need not expressly construe any claim terms to resolve the parties’ disputes. 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)). Accordingly, we apply the plain and ordinary meaning of the claim terms. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,737,511 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Dec 12, 2024 · IPR2023-01054 · APJ Russell E Cass · IPR · Final written decision
Claims 4 and 11 are unpatentable over Grotmol and Hickman; claims 5 and 7 are not shown unpatentable. Substitute claims 21 and 24–26 are unpatentable; claims 22 and 23 are not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art, 3 Patent Owner does not present objective evidence of nonobviousness in this proceeding. would have [had] at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4 (citing Ex. 1002 ¶¶ 40–42). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 6. Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, except as noted above, we adopt Petitioner’s assessment” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “connection” Claim 7 recites, in pertinent part, that “a first connection is generated” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“c) Conclusion—Claim 7 After consideration of the contentions and the evidence of record, we” slip op. at 52
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“7 We recognize that our conclusion here differs from the preliminary determination made in our Preliminary Guidance. After considering the full trial record, including Patent Owner’s MTA Reply, Petitioner’s MTA Sur-reply, Patent Owner’s Sur-sur-reply, and the arguments made at the oral hearing, we find that Petitioner has satisfied its burden of showing that this claim limitation would have been obvious over the Grotmol-Hickman combination. When issuing our Preliminary Guidance, we emphasized that the views expressed therein were “preliminary,” “subject to change upon consideration of the complete record,” and “not binding on the Board when reaching a final written decision.” See Prelim. Guid. 3.” slip op. at 99
Patent outcomesUS 10,452,974 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Dec 12, 2024 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Final written decision
Claims 3, 6–8, and 10–18 are unpatentable; cancellation of claims 4, 5, and 9 is granted, and proposed substitute claims 21–29 are unpatentable.
RulingsFinal written decision- Expert testimonyOther
“Accordingly, we maintain our determination at the institution stage” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“f) Conclusion—Proposed Substitute Claim 21 For the reasons given, we determine that Petitioner demonstrates by a” slip op. at 111
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“g) Conclusion—Disclaimed Claim 1 For the reasons given above and the reasons presented by Petitioner,” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“4. Claim 6 Claim 6 depends from claim 3 and recites the following:” slip op. at 73
Patent outcomesUS 11,238,344 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,238,344 - PTAB · Nov 22, 2024 · IPR2024-00814 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–20 for all petitioned challenges, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response 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.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1, 2 and 4– 20 of the ’244 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’244 patent.2” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA” or “POSA”) at the time of the invention of the ’244 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four years’ experience in cloud services for settings customization” and that “[a]dditional education (e.g., Master’s degree in electrical engineering, computer science, or equivalent) could substitute for professional experience and vice-versa.” Pet. 12 (citing Ex. 1005 ¶ 82). Patent Owner does not address the level of ordinary skill in the art at this preliminary stage of the proceeding. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner, “[n]o terms of the patent need construction for the purposes of IPR because the claims read on the prior art below under any construction consistent with Phillips.” Pet. 12. Patent Owner contends that “the Petition abuses and distorts the plain language of the claims to arrive at its conclusory ‘read on the prior art’ argument.” Prelim. Resp. 32. Patent Owner contends that Petitioner disregards “server” limitations recited in the challenged claims. Id. at 32– 35. Patent Owner, however, does not proffer construction of any claim terms. Id. We do not need to construe any terms expressly to reach our decision. 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 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“At this stage, we do not need to resolve this dispute. Petitioner has met its initial burden of production to show that its references are prior art. See Pet. 3 (identifying filing and publication dates as well as bases). As such, the burden of production shifted to Patent Owner to refute Petitioner's argument by either showing the prior art does not actually qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner did not do so, we are satisfied that Petitioner has sufficiently shown that its asserted references qualify as prior art. Nevertheless, the parties are invited to further develop this record after institution if needed.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,396,244 - Toyota Motor Corp. / Kia Copr. v. Emerging Automotive LLCInstitution deniedPTAB · Nov 21, 2024 · IPR2024-00785 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Zaid disclosed or taught the claimed vehicle-unlocking request, for claims 1–7, 10–15, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Additionally, Petitioner specifically argues that Zaid discloses this limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124). Thus, after review of the arguments and evidence, we find that Petitioner has not provided sufficient explanation and supporting evidence that Zaid discloses or teaches “a request from the mobile device for unlocking of the vehicle” as required by limitation [1e]. Accordingly, based on the current record, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that independent claim 1 is anticipated by or rendered obvious in view of Zaid.” slip op. at 25
- Expert testimonyDecided for patent owner
“limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,407,026 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 9, 2024 · IPR2024-00445 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims. And as a result, based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’682 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 24
- BurdenNot shown unpatentable
“testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“After studying Cioffi, in view of Petitioner’s contentions and the testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Pet. 17 (citing Ex. 1102 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682
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.