- PTAB · Jan 29, 2025 · IPR2024-01159 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–27 were unpatentable over the asserted PayPal-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Autoscribe’s argument that PayPal Express Checkout does not teach the “providing” steps of independent claim 1 and 25 and the “receiving” step of independent claim 15 for two reasons. First, as we explain in our claim construction analysis above, we decline to adopt M&A Ventures’s proposed construction of the “providing” and “receiving” steps as being limited temporally such that not providing the data token to the payer only occurs “during execution of the token retrieval function.” Instead, we construe the “providing” and “receiving” steps in accordance with their plain and ordinary meanings, which includes giving the negative limitation recited therein (i.e., not providing the data token to the payer) patentable weight, without limiting the occurrence of this negative limitation during execution of the token retrieval function. See supra Section II.A.1. With this construction in mind, step 4 of the PayPal Express Checkout flow run in the sandbox environment plainly sends the Payer ID, which M&A Ventures maps to the claimed “data token,” to the buyer. Ex. 1006, 17, 25–26; see also Pet. 64 (arguing PayPal’s Payer ID teaches the “non-sensitive electronic data token” (emphasis omitted)), 67 (arguing the same). Because PayPal sends the Payer ID to the buyer during the PayPal Express Checkout flow, PayPal provides the data token to the payer and, therefore, violates the negative limitation required by the “providing” and “receiving” steps.” slip op. at 31
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We must look to all the intrinsic evidence of record, including the claim language itself, the specification of the ’621 patent, and its prosecution history, to determine whether the “providing” steps of independent claims 1, 8, and 25, and the “receiving” step of independent claims 15 and 23, should be limited temporally such that not providing the data token to the payer only occurs “during execution of the token retrieval function.” See, e.g., DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)(“In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Autoscribe’s argument that PayPal Express Checkout does not teach the “providing” steps of independent claim 1 and 25 and the “receiving” step of independent claim 15 for two reasons. First, as we explain in our claim construction analysis above, we decline to adopt M&A Ventures’s proposed construction of the “providing” and “receiving” steps as being limited temporally such that not providing the data token to the payer only occurs “during execution of the token retrieval function.” Instead, we construe the “providing” and “receiving” steps in accordance with their plain and ordinary meanings, which includes giving the negative limitation recited therein (i.e., not providing the data token to the payer) patentable weight, without limiting the occurrence of this negative limitation during execution of the token retrieval function. See supra Section II.A.1. With this construction in mind, step 4 of the PayPal Express Checkout flow run in the sandbox environment plainly sends the Payer ID, which M&A Ventures maps to the claimed “data token,” to the buyer. Ex. 1006, 17, 25–26; see also Pet. 64 (arguing PayPal’s Payer ID teaches the “non-sensitive electronic data token” (emphasis omitted)), 67 (arguing the same). Because PayPal sends the Payer ID to the buyer during the PayPal Express Checkout flow, PayPal provides the data token to the payer and, therefore, violates the negative limitation required by the “providing” and “receiving” steps.” slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,620,621 - PTAB · Jan 24, 2025 · IPR2024-01145 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 7–11 were unpatentable on any of four proposed grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying upon the testimony of its declarant Dr. Christopher Hansen, Petitioner argues the following: As of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’559 Patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In addition to the above information, it would be beneficial for the macro eNB to send a measurement gap configuration (as dis-cussed in 3GPP TS 36.331 V1.1.2.0) allocated for the UE to the Small cell eNB so that the Small cell eNB could take measure-ment gaps into consideration when scheduling resources to the UE. For example, the small cell eNB could avoid scheduling the UE during measurement gaps because the UE cannot transmit or receive any signal to/from the Small cell during the measurement gaps. Ex. 1001, 6:41–49 (emphasis added). We particularly note the literal written description support (in italics) in the ’559 Patent that mirrors the claim [1e] language: “so that the Small cell eNB could take measurement gaps into consideration when scheduling resources to the UE.” Id. at 6:45–46 (emphasis added). Moreover, as noted above, Figure 5 of the ’559 Patent depicts flow chart 500. Prelim. Resp. 3–4 (citing Ex. 1001, 6:65–7:3). And step 525 of Figure 5 affirmatively describes: “The second eNB receives the measurement gap configuration from the first eNB, and takes the measurement gap configuration into consideration when scheduling resources to the UE.” Id. at Fig. 5, step 525 (emphasis added).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“cites to Advanced Display Systems Inc. v. Kent State University (212 F.3d 1272, 1281–1282 (Fed. Cir. 2000)), which sets forth the doctrine of incorporation by reference that provides a mechanism to include as a matter of law in one document the disclosure of another document. As explained by the court in Advanced Display Systems, the requirements for an effective incorporation by reference are as follows: To incorporate material by reference, the host document must identify with detailed particularity what specific material it in-corporates and clearly indicate where that material is found in the 10 We note Exhibit 1014 is the Declaration of Craig Bishop, a second declaration relied upon by Petitioner, that is generally directed to the nature, purpose, dates, and public accessibility of the 3GPP TS.331 Exhibits 1008, 1009, and 1015. See e.g., Ex. 1014 ¶¶ 65–67. This is in addition to Exhibit 1003, which is the Declaration of Dr. Hansen, for Petitioner. We have considered both declarations, to the extent relied upon by Petitioner. USPQ 144, 146 (CCPA 1973) (providing that incorporation by reference requires a statement “clearly identifying the subject matter which is incorporated and where it is to be found”); In re Saunders, . . . 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation is ap-propriate only if one reference “expressly incorporates a particu-lar part” of another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to material in an earlier ap-plication in order [to] have that material considered part of a later application). Advanced Display Systems, 212 F.3d at 1281–1282 (emphasis added). Here, we find Petitioner has not persuasively shown how Centonza expressly incorporates a particular part of the TS 36.331 reference by: (1) identifying with detailed particularity what specific material it incorporates, and (2) clearly indicating where that material is found in the TS 36.331 document. Pet. 33; Exhibits 1008, 1009.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,560,559 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 22, 2025 · IPR2024-01191 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Wiz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After Patent Owner filed its Preliminary Response, however, Petitioner filed a stipulation consistent with the stipulation filed in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A) (“Sotera”). Ex. 1107. On June 21, 2022, the Director issued guidance (“Director Guidance”) in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors.6 Notably, the Director stated that the Board “will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the [Patent Trial and Appeal Board].” Director Guidance, 3. With this guidance in mind, we decline to exercise our discretion to deny institution under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1107.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’326 patent. See Prelim. Resp. 63 (citing Ex. 1004, 109, 138). The Examiner, however, did not meaningfully address Veselov during prosecution of the ’326 patent. For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’326 patent. See id.” slip op. at 7
- 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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’326 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers essentially the same assessment of the level of skill in the art as Petitioner, arguing the following: a [POSITA] as of the ’326 patent’s earliest priority date (January 28, 2019), would have had at least a Bachelor’s degree in computer science, computer engineering, or a related field, and two years of industry experience or academic research experience in cyber security and virtualization, including cloud computing cybersecurity. Additional education can compensate for less experience and vice-versa. Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 1–12, 19–26). We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment. Petitioner’s assessment is supported by the testimony of Dr. Stavrou and it is consistent with the ’326 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,775,326 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 22, 2025 · IPR2024-01190 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 would be obvious over Veselov and Mohanty.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued guidance (“Director Guidance”) in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors.7 Notably, the Director stated that the Board “will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the [Patent Trial and Appeal Board].” Director Guidance, 3. With this guidance in mind, we decline to exercise our discretion to deny institution under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1106.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’926 patent. See Prelim. Resp. 61 (citing Ex. 1004, 138, 142). The Examiner, however, did not meaningfully address Veselov during prosecution of the ’926 patent. For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’926 patent. See id. It is also undisputed that the Examiner did not consider the other references that serve as the basis of Petitioner’s asserted obviousness grounds (i.e., Mohanty, Ranum, Seo, and Hutchins) during prosecution. Nor did the Examiner have the benefit of Dr. Stavrou’s testimony regarding the teachings of Petitioner’s asserted references. Accordingly, we are not persuaded by Petitioner’s arguments that the Petition presents substantially the same art and arguments that were considered previously during prosecution of the ’926 patent.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j. Summary as to Claim 1 For the above reasons, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Veselov and Mohanty.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers essentially the same assessment of the level of skill in the art as Petitioner, arguing the following: a [POSITA] as of the ’926 patent’s earliest priority date (January 28, 2019), would have had at least a Bachelor’s degree in computer science, computer engineering, or a related field, and two years of industry experience or academic research experience in cyber security and virtualization, including cloud computing cybersecurity. Additional education can compensate for less experience and vice-versa. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 1–13, 19–26). We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment. Petitioner’s assessment is supported by the testimony of Dr. Stavrou and it is consistent with the ’926 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,740,926 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 16, 2025 · IPR2024-01109 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1093.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’809 patent. See Prelim. Resp. 58–60; see also Pet. 7. The Examiner, however, did not meaningfully address Veselov during prosecution of the ’809 patent. See Pet. 7 (citing Ex. 1004, 73, 107– 115, 156–157, 181–182). For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’809 patent. See id. It is also undisputed that the Examiner did not consider the other references that serve as the basis of Petitioner’s asserted obviousness grounds (i.e., Mohanty, Hutchins, and” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Ex. 1001, 9:48, 11:24, 12:16. Petitioner proposes we construe this term to encompasses two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from a snapshot.” See Pet. 10. Patent Owner disputes the second approach, but not the first. See Prelim. Resp. 9–12. For purposes of institution, we agree with Petitioner’s first alternative approach—“analyz[ing] the snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the ’809 patent’s specification. See, e.g., Ex. 1001, 5:20–21 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 5:37–40 (“[T]he security system 140 may be configured to match the application files, either directly (using binary comparison) or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Petitioner’s obviousness analysis is sufficient under this first approach, we take no position on Petitioner’s second alternative approach, which Patent Owner disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Pet. 8–10, we do not need to further construe the claims to determine whether to institute IPR. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Petitioner’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’809 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,726,809 - Vusiongroup SA v. Hanshow Technology Co., Ltd.Institution deniedPTAB · Jan 14, 2025 · IPR2024-01045 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any of its four § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At best, Schwartz’s disclosure cited by Petitioner teaches aggregating product information obtained from different stores, but neither the Petition nor Dr. Wolfe explains sufficiently how aggregating product information would have suggested cross-correlating different product facing bounding boxes to one of ordinary skill in the art. See Pet. 35–37; Ex. 1003 ¶¶ 148–151. We are not persuaded that aggregating product information and cross-correlating different product facing bounding boxes would have been recognized as similar or comparable processes. Moreover, Petitioner does not even assert that one of ordinary skill in the art would have recognized that Schwartz cross-correlates one or more product facing bounding boxes and one or more other product facing bounding boxes as required by limitation [1.5]. Instead, Petitioner asserts only that one of ordinary skill in the art “would have recognized Schwartz . . . cross-correlates that product and affiliated shelf added). Furthermore, limitation [1.5] recites cross-correlating different product facing bounding boxes by matching shelf label content of the different product facing bounding boxes. But Petitioner does not explain adequately how the combination of Schwartz and Katircioglu satisfies this requirement. Pet. 35–37. Although Petitioner asserts that the combination discloses associating shelf label content with product facing bounding boxes (id. at 30–35), we are not directed to any disclosure in either Schwartz or Katircioglu that teaches or suggests matching the shelf label content of different product facing bounding boxes. For the above reasons, Petitioner fails to persuade us that the combination of Schwartz and Katircioglu discloses limitation [1.5]. Therefore, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claim 1 is unpatentable over the combination of Schwartz and Katircioglu.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) in November 2016 would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics, machine learning, artificial intelligence or automated object recognition methods and systems, or equivalent training and work experience in the field. Formal education can substitute for work experience and relevant work experience could substitute for formal education. Pet. 8–9 (citing Ex. 1003 ¶ 29). Patent Owner indicates it agrees with Petitioner’s definition of a person having ordinary skill in the art. Prelim. Resp. 4–5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o formal claim constructions are necessary ‘to resolve the controversy.’” Pet. 9 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner adds that there is a rebuttable presumption that § 112(f) does not apply because the challenged claims do not recite “means.” Id. In the event the presumption is overcome with respect to the claim terms “processor” and “product classifier,” Petitioner identifies the disclosure describing the corresponding structure for these terms. Id. at 9–10. Patent Owner contends that claim construction is not necessary and the claims should be given their plain and ordinary meaning. Prelim. Resp. 5. Regarding the claim terms “processor” and “product classifier,” Patent Owner argues that Petitioner has not advanced any argument to rebut the presumption that § 112(f) does not apply. Id. at 6. any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,087,272 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a 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. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this 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.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883
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.