- Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00359 · APJ James J Mayberry · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 over Backhaus and Taylor, and claim 3 over Backhaus, Taylor, and Saksena.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . at the time of the alleged invention of the ’554 patent would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication . . . More education can supplement practical experience and vice versa. Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’554 patent.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenged claims to resolve the underlying controversy.” Pet. 8. Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. As will be evident from our analysis below, we rely only on the “second way” for purposes of this Decision. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–22; Pet. Reply 3 (“Flyp does not even allege that its construction is relevant to the ‘second way’ the Petition addresses limitation [1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. 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)). Also, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“suggest that we categorially disregard Dr. Lin’s declaration. As a general point, our precedential decision in Xerox does not provide a blank condemnation of declaration testimony that is identical or virtually identical to language in a paper. Xerox found that the “cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox at 15; see also 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.”). Here, Dr. Lin cites to evidence to support certain testimony. See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011). Also, we do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s testimony. We assess the appropriate weight to give the testimony in our analyses below.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“provided a motivation to combine the teachings of a PSTN interface in Backhaus’s system, even though Backhaus discloses interfacing with the PSTN. Backhaus is silent as to how its system interfaces with the PSTN. As such, we agree with Petition that a person having ordinary skill in the art would have been motivated to connect SLS platform 115 with the PSTN and to also include a PSTN interface in order to facilitate such an connection when implementing Backhaus’s system and processes—such that SLS platform 115 could provide the disclosed second line services to many device users connected to the PSTN that is known to provide reliable communications. Pet. 50. Indeed, Patent Owner’s argument that Backhaus discloses interacting with the PSTN strengthens Petitioner’s position, demonstrating that a person having ordinary skill in the art, when considering Backhaus’s and Taylor’s teachings together, would have used a PSTN interface to ensure a connection with a PSTN. Cf. Pet. Reply 19 (“Rather, it shows that a [person having ordinary skill in the art] would have been motivated to ‘include a PSTN interface similar to that discussed in Taylor when implementing Backhaus’s telephony service system.’” (citing Pet., 49–51)).” slip op. at 32
Patent outcomesUS 11,012,554 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,012,554 - PTAB · Apr 1, 2024 · IPR2023-01360 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A claim “shall be construed using the same 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). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 3. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (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 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless communication systems.” Pet. 5, n.1; Ex. 1003 ¶ 17. Dr. Butler further states that “[m]ore education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner states that “[f]or the purposes of this preliminary response,” it “does not challenge that definition.” Prelim. Resp. 3. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and Dr. Butler and not disputed by Patent Owner as reasonable and consistent with the prior art. See Okajima v Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the present record, we determine that Petitioner has made a sufficient showing as to this limitation for purposes of institution. In this regard, Petitioner has introduced sufficient evidence at this stage of the proceeding that one of ordinary skill would have been motivated to combine Rao and Araujo as Petitioner proposes. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have found it obvious to combine a Remote Access Client as taught by Rao with a PPM and request deflector as taught by Araujo to provide a client that better ‘use[s] the energy in a way that strikes a balance between providing functionality and maintaining longevity of the charge.’” Ex. 1003 ¶ 75. It also includes Dr. Butler’s testimony that, in implementing Rao’s filtering, prioritization, and queuing functionality, one of ordinary skill “would have perceived opportunities for improving the policy management capabilities already present in Rao to impart additional advantages, such as optimizing power use,” and would have known that “mobile devices use techniques for optimizing the use of constrained resources, including network bandwidth and battery power.” Id. ¶ 77. Dr. Butler further explains that one of ordinary skill “would have recognized the importance of power management at least because, in mobile devices, applications cannot execute without sufficient power.” Id. Additionally, Dr. Butler testifies that, for these reasons, one of ordinary skill “would have looked to policy-based power management such as taught in Araujo to serve as one of Rao’s ‘multitude of ways to define client-side application priorities,’” to create a device that “would both manage power according to the PPM techniques of Araujo and manage network use according to the techniques of both Rao and Araujo.” Id. ¶ 78. And, Dr. Butler explains, based on Rao and Araujo, one of ordinary skill “would have understood and found obvious that policy enforcement” in the Rao-Araujo combination “may be based on application state (foreground, background) and power state (battery/plugged-in). Id. ¶ 80. We determine that this testimony is reasonable and credible based on the record presently before us, and is unrebutted by countervailing evidence from Patent Owner. We also determine that Petitioner has introduced sufficient evidence that one of ordinary skill would have had a reasonable expectation of success in achieving the proposed Rao-Araujo combination. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have expected success integrating a PPM and deflector components as taught by Araujo into a remote access client as taught by Rao,” that “the request deflector (Araujo) and packet capture mechanism (Rao) serve similar functions,” and that “[c]ombining such functions would have required only routine programming skill well within the skill set of” a person of ordinary skill. Ex. 1003 ¶¶ 81, 83.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,609,544 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01462 · APJ Russell E Cass · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–26 were unpatentable, finding the asserted combinations did not teach blocking an Internet service access request.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 15– 17). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Kevin Butler. Ex. 1003 ¶¶ 15–17. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s description, which is consistent with the ’445 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction A claim “shall be construed using the same 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). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 4. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (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 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that its system can “classify[] and/or control[] network access requests (e.g., IP address requests).” Ex. 1001, 11:27–32 (emphasis added). In particular, the ’455 patent describes an example where “before a connection is allowed to be opened . . . it is blocked and a message is sent back to the application . . . that the network access attempt was not allowed/blocked.” Id. at 91:41– 49 (emphasis added). In contrast, the ’455 patent explains that its system also can “classify[] and/or control[] . . . network capacity/resources usage (e.g., bandwidth usage).” Id. at 11:27–32. For example, a “socket can be allowed to open but after some point in time (e.g., based on network service usage . . . ), the stream is blocked or the socket is terminated.” Id. at 91:49– 54. In other words, the ’455 patent distinguishes between 1) blocking an Internet service access request before a connection is open; and 2) blocking a network stream after a connection is open. Id. at 11:27–32, 91:41–54.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 9,277,445 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01361 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Samsung did not show a reasonable likelihood that claims 1–6, 10–20 would have been obvious over the asserted combinations.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 15– 17). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Kevin Butler. Ex. 1003 ¶¶ 15–17. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 4. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 2–3; Prelim. Resp. 4. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- 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). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2
- BurdenNot shown unpatentable
“allowed to open but after some point in time (e.g., based on network service usage . . . ), the stream is blocked or the socket is terminated.” Id. at 91:49– 54. In other words, the ’184 patent distinguishes between 1) blocking an Internet service access request before a connection is open; and 2) blocking a network stream after a connection is open. Id. at 11:27–32, 91:41–54; see also id. at 106:39–43 (distinguishing between an “Internet service access request” and “network activity”). On this record, Petitioner does not show sufficiently that the combination of Rao, Oestvall, and Freund teaches blocking an Internet service access request. First, Petitioner asserts that Rao’s applications “communicat[e] over the Internet and receiv[e] service from servers,” and thus a person of ordinary skill in the art “would have understood or found it obvious that Rao’s applications would be configured to send packetized communications over the Internet to such servers requesting access to their corresponding services (an Internet service access request).” Pet. 30 (citing Ex. 1003 ¶¶ 107–108; Ex. 1005 ¶¶ 90, 179, 184). Even if Petitioner is correct that a person of ordinary skill in the art would have known that Rao’s applications send an Internet service access request, that alone does not show that Rao also teaches blocking the Internet service access request. See id.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 9,271,184 - PTAB · Mar 25, 2024 · IPR2023-01336 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–25 over all asserted grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“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) (precedential).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“individually, rather than the combined teachings of Rao and Oestvall that are asserted in the Petition. As Petitioner explains, Oestvall teaches the claimed selective blocking because “Oestvall’s device prevents the application from ‘being given any services or consuming any resources,’ so a POSITA would have understood and found obvious that such prevention would block the application’s access to network resources (e.g., WWAN modem).” Pet. 29 (quoting Ex. 1006 ¶ 23). In addition, “Oestvall describes that its scheduler regulates access to resources by an untrusted application depending on whether the application runs in the background or foreground.” Id. at 29. Petitioner also explains why a skilled artisan would have been motivated to employ Oestvall’s blocking strategy in Rao—“to increase device efficiency where device operation increases battery consumption, such as when the device is engaged in network activity over a WWAN network.” Id. at 31. Thus, even if Patent Owner is correct in its characterizations of Rao, those arguments do not ultimately undermine obviousness because Petitioner adequately explains how Oestvall teaches the features allegedly missing in Rao.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 3; see generally Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,137,701 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Mar 21, 2024 · IPR2023-01253 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–29 were unpatentable; the asserted art did not teach or suggest indicating network access conditions to the application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obvious because “Rao’s device can run the Java operating system” and a skilled artisan “would have understood and found obvious that the application would have received an indication, via the Java sockets API, of the network access condition.” Pet. 29. We disagree. Although Rao mentions Java as one in a long list of example operating systems (see Ex. 1005 ¶ 128 ), Petitioner’s argument is insufficient because it does not explain why using Java necessarily means applications will receive the specific indication claimed—one that notifies an application of network access conditions. Likewise, Petitioner offers no reason why one skilled in the art using Petitioner’s asserted combination of Rao and Oestvall would have been motivated to do so. See id. Absent such an explanation, Petitioner’s argument amounts to no more than asserting that Rao teaches using Java and that Java sockets were known. Petitioner’s argument lacks known and why employing that notification would have been obvious to one skilled in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (noting that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had (1) at least a bachelor’s degree in computer science, computer electrical engineering, or a related field, and (2 at least two years of industry experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Ex. 1003 ¶ 17; see Pet. 11 n.3. Patent Owner does not challenge Petitioner’s definition at this stage of the proceeding. Prelim. Resp. 8. On this record, we agree with Petitioner’s definition.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party proposes an express construction for any claim terms. Pet. 2–3; Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 5
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,143,976 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 16 and 17 for all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry of equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,461,719 - PTAB · Feb 8, 2024 · IPR2023-01226 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“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) (precedential). Here, Petitioner relies on D’Amore, a reference that was not before the examiner, for teaching claim limitation [1.6], which requires “a selected subset of the background network service usage activities are deferred until network congestion is no longer indicated.” Pet. 7, 36–37. We agree with Petitioner that D’Amore is not cumulative of Cole. Pet. Reply 3–4. Specifically, D’Amore teaches that “different priority levels (e.g., high or low) are assigned to applications” and “access by the lower priority applications is restricted or deferred when the network is congested.” Pet. 40 (citing Ex. 1006 ¶ 60–61, 70–72); see Prelim. Resp. 22. Cole’s relevant disclosure, in contrast, is more generic. It teaches aborting “certain bandwidth activities” and “reschedul[ing] the aborted activity at a later time, presumably when the bandwidth load will be decreased or a better connection will be available.” Pet. 34 (citing Ex. 1005 ¶¶ 75, 80); see Prelim. Resp. 22. As compared to Cole, D’Amore’s disclosure more clearly teaches what is deferred in limitation [1.6] (“a selected subset of the background network service usage activities”) and the deferment’s extent (“until network congestion is no longer indicated”). Thus, Patent Owner has not shown that part one of the Advanced Bionics framework is met.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 3; see generally Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) at least two years of industry experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s definition at this stage of the proceeding. Prelim. Resp. 7. On this record, we agree with Petitioner’s definition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness contentions. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its challenges to claims 1–20. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’773 patent is unpatentable. We therefore institute trial on all challenged claims and grounds raised in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or as to the construction of any claim term. Any final determination will be based on the record developed during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,237,773 - PTAB · Jan 22, 2024 · IPR2023-01157 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds, finding a reasonable likelihood that the challenged claims would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“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) (precedential).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 2; Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s definition at this stage of the proceeding. Prelim. Resp. 8. On this record, we agree with Petitioner’s definition.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Patent Owner’s argument. While Rao’s packet- level control is different from the claims’ and D’Amore’s application-level control, that difference does not undermine or counsel against application-level control. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.”) (internal quotation marks omitted). To the contrary, as Petitioner explains, both the packet-level and application-level control methods further the same design objective of proactively preventing overloaded connections that impact performance. See Pet. 22. Moreover, nothing in Rao’s packet-level control undermines Petitioner’s explanation that one skilled in the art would implement a different feature of Rao— Rao’s application association—as a known way “to identify application traffic at the packet level, allowing for inter-application classification of activities based on protocol.” Id. at 21. In light of Petitioner’s rationale, as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Rao’s packet capture mechanism, which identifies an application associated with each packet, with the Cole-D’Amore system that does application-level control. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,405,224
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.