- Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Apr 4, 2024 · IPR2022-01592 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–3, 8–12, 14–18, and 20 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claim 11 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Ex. 1001, 7:4–7, 21:57–67, 24:13–16, 29:18–20. We do not dispute that, without the microphone or some similarly functioning component, the device could not detect the input. However, Petitioner’s interpretation would be equally applicable if the limitation were “detect an input” and fails to give meaning to the modifier “voice” in the phrase “detecting a voice input” as recited. The abstract of the ’311 Patent explains that the device “detects a voice input” and “determines a first score of a criterion associated with the voice input.” Ex. 1001, code (57). Determining a score for the detected voice input implies some level of identification of the input as a voice, and not mere perceiving or sensing by the microphone. And, the Specification states that “in accordance with some implementations, a voiceactivated device determines whether the surrounding noise is sufficiently interfering with detection of spoken hotwords for waking up the device . . . or other spoken voice inputs.” Id. at 5:65–6:5. Thus, the ’311 Patent discloses that the device distinguishes between background noise and the detection of specific voice inputs like hotwords. We conclude that the ordinary and common meaning of “detecting a voice input” in the context of the claims and Specification of the ’311 Patent requires the device to identify the input as voice.6 In sum, we conclude that the ordinary and common meaning of “detecting a voice input” requires a process for identifying that an audio input includes voice and does not exclude speech recognition.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”7 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 24
Patent outcomesUS 11,024,311 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,024,311 - Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution deniedPTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two 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 a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,099,383 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Mar 15, 2024 · IPR2022-01594 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–3, 5–8, 10–13, and 15 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claims 5, 10, and 15 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“PO Resp. 12–15; PO Sur-reply 1–6. Petitioner also does not argue either lexicography or disavowal. Tr. 8:9–17. We do not find either (1) lexicography or (2) disavowal, because (1) there is no clearly set forth definition of “detecting a voice input’ in the ’128 patent or (2) evidence of a clear and unmistakable intent to disavow the ordinary and customary meaning of “detecting a voice input.” Accordingly, we apply the ordinary and customary meaning of “detecting the voice input” in light of the language of the claims, specification, and file history (the intrinsic evidence). Thorner, 669 F.3d at 1365. In the Response and Reply, the parties assert different views of the ordinary and customary meaning of “detecting the voice input” as recited in the independent claims of the ’128 patent.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a “POSITA [(person of ordinary skill in the art)] in the technology field of the ’128 Patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 ¶¶ 63– 65.). Patent Owner does not present a position on the level of ordinary skill in the art at the time of the invention. See generally PO Resp. Petitioner’s proposal is consistent with the technology described in the Specification of the ’128 patent and the cited prior art. We adopt Petitioner’s proposed level of skill in the art.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”12 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. at 63, 65–66. We find Petitioner’s articulated reasons for combining the relevant teachings of Rosenberger and Kim to be well-supported. The Response contains this single sentence criticizing Petitioner’s showing of motivation to combine: “[A]ll of the Petition’s motivations to combine are clearly rooted in hindsight because, in Rosenberger, only devices that recognize a particular command (i.e., the devices that a voice command is intended for in the disclosure of Kim) need to participate in the arbitration process.” PO Resp. 30 (citing Ex. 2012 ¶ 87). This argument is not developed or explained and it contradicts the disclosure of Rosenberger. In Rosenberger, all the devices that detect and recognize a voice input (the trigger phrase) participate in the coordination or arbitration process. See, e.g., Ex. 1003, 9:57–10:33. This argument lacks merit. We find that the combination of Rosenberger and Kim teaches all the limitation of claims 5, 10, and 15 of the ’128 patent and that a motivation to combine the relevant teachings of these references existed. We conclude that a clear preponderance of the evidence establishes that claims 5, 10, and 15 of the ’128 patent are unpatentable as obvious.” slip op. at 30
Patent outcomesUS 9,812,128 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,128 - Intel Corporation v. Ax Wireless, LLCInstitution deniedPTAB · Mar 5, 2024 · IPR2023-01146 · APJ Michael T Cygan · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show Huang or Sun was prior art to claims 1–10, which it argued were obvious over those references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, Petition bears the burden to establish, by a reasonable likelihood that at least one of the challenged claims would have been obvious over the cited art. See 35 U.S.C. § 314(a). Where unpatentability rests on a document that is prior art to a challenged patent but for that patent’s priority claim to an earlier effective filing date, such a priority claim is not presumed valid. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (noting that the USPTO does not routinely determine whether such priority claims meet the requirements of 35 U.S.C. § 120).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in electrical engineer-ing or a similar discipline, and/or at least two to three years of experience working or conducting research in wireless commu-nication protocols, or an equivalent combination of education and experience. Pet. 6 (citing Ex. 1003 ¶¶ 71, 72). Patent Owner does not contest Petitioner’s assertion as to the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’146 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2022). The Board is required to construe “only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner, in extended briefing, contest the construction of the phrase “detecting, from the received wireless packet, the second header field which repeats the first header field,” as it appears in claim 1. Pet. 9; Prelim. Resp. 1; Pet. Reply 3; PO Sur-Reply 3. However, both parties appear to agree that the plain and ordinary meaning of the term should apply. See Pet. 6; Prelim. Resp. 15. Further, Petitioner has clarified that its statements as to the scope of the term are directed to its assertions that the ’146 patent lacks support for the claimed subject matter in its parent applications. Pet. Reply. 5–6. Consequently, we address claim construction arguments in their context of the parties’ priority contentions. See infra at II.D.1.” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Patent Owner has shown sufficient written description support for the claims, including the disputed “detecting” limitation. The “decode-to-learn- ‘D’” description in the specification of the ’146 patent and in the provisional application to which the ’146 patent claims priority describe a specific procedure for the claimed “detecting, from the received wireless packet, the second header field which repeats the first header field.”3 See Ex. 1001, 2 Petitioner specifically asserts that Huang qualifies under 35 U.S.C. §102(b). Pet. 2, 19 (“by more than a year”). However, Huang’s patent issuance date of April 28, 2020 does not qualify under § 102(b) because it is less than one year before the December 29, 2020 filing date of the ’146 patent. Nevertheless, Petitioner has made an effective showing that Sun would qualify as prior art sufficient to shift the burden of production to Patent Owner. 3 Patent Owner does not explicitly show support for each of the applications in the priority chain. Patent Owner also cites to a Pre-Grant Publication rather than the underlying application despite the fact that such a Publication may include amendments to the originally filed application that would not evidence written description. See 37 C.F.R. § 1.215 (a); MANUAL OF PATENT EXAMINING PROCEDURE §1121; Ex. 2003, 7 (showing amendments 3:1–11; Ex. 2001 ¶ 35; Ex. 1008, 5–6; PO Sur-Reply 6. The “D” information is received in the wireless packet, and the receiver determines therefrom whether there is a second header field that repeats the first header field. See Ex. 1008, 5–6; PO Sur-Reply 6. The written description further includes descriptions of other embodiments for receiver detection with variable repetition, including detection “without knowing D a priori.” Ex. 1001, 2:18–3:59.” slip op. at 9
Claim construction§ 112 disclosurePatents in suitUS 11,212,146 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution
The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6
- 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 [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,212,146 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 21, 2024 · IPR2023-01144 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–8, 10–18, 20–23, 25–38, and 40 based on all petition grounds, finding a reasonable likelihood of success under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner’s showing that a person of ordinary skill in the art would have had reasons to combine the relevant teachings of Hansen and WWiSE based on the express suggestion in Hansen is reasonable and supported.” slip op. at 34
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“4. Discussion At this stage of the proceeding, the prior art status of Zhang is the only dispute between the parties as to the patentability challenge based on Zhang and Maltsev. See Prelim. Resp. 47–56. For the purpose of institution, we need not determine whether Zhang is entitled to the filing date of ’900PROV, because, as explained above with respect to the unpatentability challenge based on Hansen and WWiSE, we have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The ’566 Patent also claims the benefit of the filing date of Provisional Application No. 61/235,909, filed on August 21, 2009. Ex. 1001, code (60), 1:8–18. “Petitioner does not acquiesce that the ’566 patent is entitled to the priority date of the ’909 provisional.” Pet. 1. We look forward to the development of the full trial record as to the prior art status of Zhang to the ’566 Patent. We note that, although the burden of production may shift between the parties during trial on this issue, the burden of persuasion to show that Zhang is prior art to the ’566 Patent always remains with Petitioner. See Dynamic Drinkware, 800 F.3d at 1379– 80.” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,614,566 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01143 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–6, 8–14, 16–19, 21–30, and 32, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“As an initial matter, for the first time in the Sur-reply Patent Owner contends that we should exercise discretion to deny institution on the basis of the HP district court proceeding and the Acer district court proceeding. Patent Owner did not previously address discretionary denial on the basis of these district court proceedings, but instead addressed “the two parallel district court proceedings involving . . . Dell and Lenovo.” Prelim. Resp. 56; see id. at 56–57. Patent Owner’s arguments are belated and outside the proper scope of a proper sur-reply, and should not be considered. “Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 74 (citing 37 C.F.R. § 42.23). It “does not mean to proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Id. In any event, even if we were to consider Patent Owner’s belated arguments, Patent Owner does not direct us to evidence to support its argument that HP and Acer are real parties-in-interest or privies. Nor does Patent Owner direct us to evidence demonstrating any involvement or control by HP or Acer in this proceeding. Thus, HP and/or Acer’s actions, including whether they raise these same grounds of unpatentability in their respective district court proceedings, should not be imputed to Petitioner.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“has shown a reasonable likelihood of establishing that (1) July 2005 WWiSE is a prior art printed publication and (2) the subject matter of claim 1 is unpatentable as obvious in view of the combination of Hansen and WWiSE. On that basis, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.16” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Petitioner alleges and provides evidence that July 2005 WWiSE was posted to, and continuously publicly available from, sources maintained by IEEE from July, 2005, until the earliest priority date of the ’707 patent. Petitioner further alleges and provides evidence that any interested member of the public could access July 2005 WWiSE during this time period. Although Patent Owner contends that WWiSE could not have been located by a skilled artisan, Petitioner’s evidence shows that WWiSE was made available to members of the TGn Task Group of the IEEE 802.11 WLAN Working Group without any restrictions of confidentiality or limits on dissemination. And, Petitioner provides evidence that interested members of the public would have known to look for WWiSE because the proposals made to IEEE in this time frame were frequently discussed in industry publications. In addition, we note that WWiSE lists over fifty contributors that were associated with a wide variety of technology companies in this space. Ex. 1005, 2–4. The parties may want to consider during trial, and in accordance with our Rules, whether this evidences or otherwise supports public availability. We determine that Petitioner has established the public accessibility of WWiSE sufficiently for the purpose of institution.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,584,262 - Intel Corporation v. Ax WirelessInstitutedPTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,917,272 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01138 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Id. at 22. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2022)18 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id. In the Reply, Petitioner notes that it is not a party to any proceeding brought by Patent Owner, but named Dell and Lenovo as real parties-in-interest. See Reply 1. Petitioner filed stipulations from its real parties-in-interest Dell and Lenovo, in which each of Dell and Lenovo state that they “will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Exs. 1041, 1042. Petitioner further notes that Patent Owner brought four separate district court proceedings asserting the ’459 Patent against Dell, Lenovo, as well as against HP Inc. (“HP”) and Acer Inc. (“Acer”). See Reply 1. According to Petitioner, “[t]he Sotera stipulations from Dell and Lenovo remove any overlap between the present IPR and the Dell and Lenovo litigations.” Id. Petitioner asserts, “[g]iven the Sotera 18 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf stipulations and the Fintiv Memo guidance, the Board should decline to exercise its discretion to deny institution.” Id. at 1–2. In light of the mandatory Fintiv guidance regarding Sotera stipulations discussed above, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. The Sotera stipulations filed by Petitioner’s real parties-in-interest Dell and Lenovo mitigate the concerns of potentially conflicting PTAB and district court decisions as to the disputes between Petitioner, Dell, and Lenovo, and Patent Owner.” slip op. at 53
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,554,459 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01137 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–11, and 13 on both §103 grounds, finding a reasonable likelihood that the Hansen-WWiSE combinations render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’449 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’449 patent on all asserted grounds of unpatentability.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s showing sufficient for institution. Petitioner asserts a combination of Hansen, which splits its Signal*-N field into two symbols, with WWiSE, which appends a second copy of a Signal-N field as an ER-Signal-N field. Ex. 1015 ¶ 97; Ex. 1006, Fig. 11, 69:13–18. WWiSE describes that the Signal-N-containing symbol is followed by the ER-Signal- N containing symbol, which supports Petitioner’s assertion that the combination would start with the first bits of the Signal-N header, which Hansen’s Signal-N header bits are split between two symbols, we do not agree with Patent Owner that there is no reason to split the Signal-N symbol into two symbols in the Hansen-WWiSE combination. We agree that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have found it obvious to try generating and sending two identical symbols followed by the other two identical symbols when combining Hansen and WWiSE. The application of common sense to try a limited number of known options within the technical grasp of a person of ordinary skill may indicate the obviousness of a combination. KSR, 550 U.S. at 421. When applying WWiSE’s teaching that ER-containing symbols follow non-ER symbols to Hansen’s two-symbol, non-ER Signal-N, we are persuaded by Dr. LaPorta’s testimony that a person of ordinary skill in the art would have anticipated success with either alternative 1 (NR symbol followed by same-bit ER symbol) or alternative 2 (both NR symbols followed by both ER symbols). Ex. 1003 ¶¶ 163–165. Because alternative 1 provides the order required by limitations [1J] and [1K], we determine that Petitioner has sufficiently shown its asserted combination to teach those limitations.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 44
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,291,449
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.