- PTAB · Jun 6, 2025 · IPR2024-01456 · APJ Amber L Hagy · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7–9, and 13–15 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable over the cited art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’579 patent. We institute review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not filed a preliminary response, and therefore Petitioner’s assessment is unchallenged at this stage. For purposes of this institution decision, and based on the present record including the disclosure in the ʼ579 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 18). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ579 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 17. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. At this stage, and for purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed the arguments and evidence submitted by Petitioner. At this stage, and on this record, we determine that Petitioner has shown sufficiently for institution that the prior art teaches or suggests these limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,450,579 - PTAB · Apr 7, 2025 · IPR2024-01361 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–16 and all petition grounds after finding a reasonable likelihood that claims 1, 2, and 9–12 are unpatentable over Kiani and Pelio.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’261 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Rosing, Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, including the use of renewable energy in powering datacenters, workload distribution amongst geographically distributed datacenters, and power management techniques for datacenters.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 15. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. For purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden at the institution stage “to identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine that, at this point in the case and for purposes of institution, and based on the totality of the evidence to date, Petitioner has submitted sufficient evidence to establish a reasonable likelihood that Kiani was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In particular, the face of Kiani bears a copyright date of 2017, a publication date of May 2017, and a volume number in which it was published in an established journal (IEEE Communications Magazine). Ex. 1005; see also Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,283,261 - ROKU, Inc. v. Dolby International ABInstitution deniedPTAB · Apr 3, 2025 · IPR2024-01354 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that claims 1–17 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’757 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not present an alternative definition. See Prelim. Resp. 10 (“For purposes of this preliminary response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’757 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶¶ 19–24), we apply the level of skill set forth above.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pet. 9. Petitioner also identifies functions and disclosed acts associated with such steps “[t]o the extent the Board determines that the limitations are written in step-plus-function format.” Pet. 9–12. Petitioner argues “whether the terms are step-plus-function is immaterial because the cited art renders the claims obvious under both the step-plus-function constructions and the terms’ plain-and-ordinary meanings.” Pet. 12. Petitioner argues all other claim terms should receive their ordinary and customary meaning. Pet. 12 (citing Ex. 1003 ¶¶ 96–98). Patent Owner responds that “[a]ll claim terms should be construed according to the Phillips standard,” without more. Prelim. Resp. 10–11. We agree with Petitioner that whether the claimed “step” terms are deemed step-plus-function is “immaterial” in deciding whether to institute inter partes review in this case, because the cited asserted art would apply in the same or substantially the same manner either way. Thus, we do not find that the express construction of any term is necessary for this decision.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner and find that Petitioner does not sufficiently explain why the skilled artisan, given Mahieux, would have had a rational reason to modify Mahieux to keep track of, let alone make use of, perceptibly significant frequency bands. Indeed, Patent Owner’s declarant, Dr. Kyriakakis, persuasively testifies why modifying Mahieux to do so would have made no sense to the skilled artisan: It would not have made sense to modify Mahieux’s system to instead count the number of audible frequency bands (e.g., the number of audible frequency bands B1-B3), as such a count would play no role in Mahieux’s bit allocation. Indeed, as Mahieux’s bit allocation focuses on the number of non-zero coefficients in each individual frequency band in isolation and without regard to the aggregate number of total audible frequency bands of the overall spectrum, generating an aggregate number of total audible frequency bands (e.g., by counting) serves no purpose in Mahieux’s allocation scheme. Further given Mahieux’s focus on allocating bits to frequency coefficients in individual frequency bands in isolation from other bands, [the skilled artisan] would fail to find any use for such an aggregate number or count. Ex. 2002 ¶ 92 (cited at Prelim. Resp. 23). Thus, we find Petitioner does not sufficiently explain why modifying Mahieux to keep track of perceptibly significant frequency bands would have presented itself to the skilled artisan as an option at all, let alone an option that would have been obvious to try. See Rolls-Royce, PLC v. United Tech. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (“[The skilled artisan] must have ‘good reason to pursue the known options within his or her technical grasp.’”).” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,339,757 - Cellco Partnership D/B/A Verizon Wireless / T-Mobile USA, Inc. et al. v. Aspen Networks, Inc.Institution deniedPTAB · Mar 17, 2025 · IPR2025-00008 · APJ Donald E Daybell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–28 were unpatentable over Tagg or Kottilingal and Politis.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“There is, however, a consistent thread that flows through the relevant disclosures of the specification; namely, that the “state involving the SIP sequence” is maintained throughout a dialog. Ex. 1001, 5:1–38 (step 210); see also id. (step 160). Using the method of Figure 4, including steps 160 and 210 and maintaining the SIP signaling state, is how the ’554 Patent discloses that calls are not broken or dropped. See, e.g., id. at 7:10–25. Maintaining the “state” of the SIP signaling sequence includes (but is not limited to) the teachings that a “SIP signaling sequence number” is maintained, as well as the details of how that number is maintained, as set forth in the specification. We find that the state of the SIP signaling sequence as that term is used in the specification refers to the rules (or paradigm) used to identify a collection of SIP signals as a “SIP signaling sequence,” and in particular the rules used to identify the next SIP packet received as belonging to a sequence of packets previously received. One key to the disclosed invention discussed in the specification is the concept that the invention prevents a call 3:45–4:9. The specification contends that the invention accomplishes this goal by configuring the packets involved in a VoIP call such that the receiving device (e.g., a SIP server) is able to recognize those packets as belonging to the same call, even though the packets are received over different paths. Id. at 7:35–50; 7:60–8:3. The particular way that the receiving devices are able to recognize that the packets are part of the same call is, per the claims, because the SIP signaling sequence is maintained after a network switch. Id. at 8:27–29. Thus, where a sequence of SIP signals uses numbers such as cseq values, there is a rule for identifying what the next signal in the sequence is. Ex. 1001, 5:1–38. A receiving device that knows the rule can identify an incoming packet as the next packet in the same signaling sequence as previously received packets, by applying the rule. Id. at 7:35–50. The specification provides one example rule, that the next SIP signal bears a monotonically-increasing cseq number. Id. at 5:1–38. But there could be other such rules as well. For example, the value could be monotonically decreased, or the value could be determined using some other formula.8 The claims also do not require that the sequence of SIP signals use “numbers” as sequence identifiers.9 Other labeling paradigms could be possible as well, 8 Patent Owner’s litigation claim construction improperly imports implementation details from the preferred embodiment, such as “cseq numbers” and the limitations that these numbers “monotonically increase” for new transmissions, or be “preserved” for re-transmissions. While such embodiments would be one way of maintaining a SIP signaling sequence, the specification does not clearly limit the invention to only these embodiments. 9 Petitioner’s litigation claim construction improperly imports the limitation from the preferred embodiment that the SIP signaling sequence must be” slip op. at 14
- Skill levelSkill level board ownDecided for patent owner
“as of the time of the invention of the ’554 Patent “would have been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement” and would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering or computer science and two years of experience; or by obtaining a Master’s degree in electrical engineering or computer science, but having only one year of experience; or by having no formal education but experience in network service plan provisioning systems of at least four years. Pet. 10. 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’554 Patent was filed before the effective date of the relevant amendment, the pre- AIA version of §103 applies. that a POSITA must specifically have “been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement.” Prelim. Resp. 17–18. At this juncture, we adopt the agreed-upon portion of Petitioner’s definition, without the specific requirement relating to designing rules. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill). Our analysis would be the same under either definition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has not shown a reasonable likelihood of success in establishing that any claim of the ’554 Patent is unpatentable, and thus we decline to institute review. The Petition is denied, and inter partes review is not instituted.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s view of Tagg. At best, the cited portions of Tagg disclose that SIP is used by endpoint 1512 to communicate with SIP server 1500, and by the SIP server to communicate with SIP proxy 1504. Figure 15 discloses that SIP is used for both of the paths from endpoint 1520 to SIP server 1500, via the WWAN or the WLAN. Figure 15 further discloses that SIP is used for the path from SIP server 1500 to SIP proxy 1504. But Figure 15 and the accompanying text are silent about any “sequences” of SIP signals at all, much less whether any such “sequences” are maintained, as required by the language of limitation 1.6. Ex. 1005 ¶¶ 324–346, Fig. 15. Instead, Tagg’s specification simply discloses that SIP is used to perform call management functions. Id. ¶¶ 245–247. Tagg’s cases 1 and 6, relied on by Petitioner, teach that Tagg’s server can ensure that the end user appears to the rest of the world (i.e. the devices upstream of the SIP server) as if no network change is being made. Ex. 1005 ¶ 320. Tagg further teaches that either “make before break” or “make and break” schemes may be used. Id. But these cases do not explain how any SIP signaling sequences are used, much less how or even that any SIP signaling sequence is maintained when a network switches. At most, Tagg teaches that each path will have an IP (Internet Protocol) address, which may be the same or different for each path. Id. ¶ 288. But IP addresses are part of the IP disclosing or suggesting that IP addressing schemes are maintained or otherwise accounted for in a network switch, that would not be sufficient to disclose or suggest that SIP signal sequences are maintained. Furthermore, under our construction of limitation 1.6, it must be shown that the same rules or paradigm used to identify that an incoming SIP packet is the next SIP packet in a sequence, regardless of whether that packet is transmitted on the first network path or the one of a plurality of alternative network paths. The Petition is silent on this point. The closest Petitioner comes is the assertion that Figure 15 depicts preservation of “the same SIP signaling sequence,” with the Petitioner’s explanation being that Tagg allows simultaneous connections across a WWAN and a WLAN, and that “POSITAs would have understood that Tagg’s SIP protocol uniformity in directionality teaches that a ‘SIP signaling sequence . . . is maintained.’” Pet. 39–40.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,009,554 - Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. Intellectual Ventures I, LLCInstitution deniedPTAB · Jan 28, 2025 · IPR2024-01244 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 obvious over either asserted prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reasoning is misplaced and unpersuasive. Per limitation 1[b][ii], which modifies limitation 1[b][i], it is the cyclic advance in limitation 1[b][i] that must be “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” Ex. 1001, 9:37–41. Petitioner has shown the amount of the 1-sample delay in Larsson’s Figure 8 is “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” But that is not what is required by the claim. Petitioner has not shown the amount of the cyclic advance relied upon by Petitioner to satisfy the cyclic advance requirement of limitation 1[b][i] meets the duration requirement of limitation 1[b][ii].” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) “would have at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, with at least two or more years of experience in the field of wireless communication systems and protocols, with more education substituting for work experience and vice versa.” Pet. 7 (citing Ex. 1003 ¶ 31). Patent Owner does not make any averment with respect to the level of ordinary skill in the art and also does not dispute Petitioner’s assertion regarding the level of ordinary skill in the art. See generally Prelim. Resp. slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“A court in W.D. Tex. construed the term “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.” See EX1009 at 8. Although that construction was adopted in a different case, Petitioners and Patent Owner agreed in their Joint Claim Construction Statement in the parallel litigation (the “Texas Litigation” as defined below) that this construction is appropriate. See EX1010.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with Petitioner that limitations 19[a], 19[b], 19[c], and 19[d] are means-plus-function elements under 35 U.S.C. § 112, sixth paragraph, and we have no reason to disagree with Petitioner’s identification of corresponding structure in the ’439 patent’s specification. We adopt Petitioner’s statement of construction for these means-plus-function elements. D.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,623,439 - Verizon Connect Inc. v. Omega Patents, LLCAll claims unpatentablePTAB · Jan 28, 2025 · IPR2023-01162 · APJ Amber L Hagy · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Flick ’885 and Flick ’561; the Board found the combination motivated with a reasonable expectation of success and the objective evidence of nonobviousness weak.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s articulation of the level of ordinarily skill in the art, noting that it is consistent with the ’278 patent and the asserted prior art, and we applied it in our obviousness evaluations therein. Dec. 23–24 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art, itself, can reflect appropriate level of ordinary skill in art)). Patent Owner states, in its Response, that it has applied Petitioner’s articulated level of ordinary skill for the purposes of this proceeding, and notes that application of this level of ordinary skill “is sufficient for the PTAB to evaluate the Petition Grounds.” PO Resp. 13. We maintain our determination of the level of ordinary skill in the art as stated in our Institution Decision, and we apply it herein.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Institution Decision, we stated that we saw no reason, at that stage of the proceeding, to depart from the Board’s previous construction of this term in Omega Patents I, which was adopted by the Board in the 504 IPR. Dec. 25. Noting that the Board’s previous construction was “soundly premised on the written description of the ’278 patent, in accordance with Phillips,” we preliminarily adopted that construction for purposes of institution. See id. (citing 504 IPR DI at 25). In so doing, we noted that our construction was preliminary, and we advised the parties (as the Board did in the 504 IPR) that “[t]he parties may further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted ‘enabling data’ in light of the written description of the ’278 patent, and more clearly explain any relevant differences between their respective interpretations.” Id. at 26 (citing 504 IPR DI at 27).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine that no express claim construction is necessary for any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“identify a commonly shared problem nor suggest the combination” (PO Resp. 21), we agree with Petitioner that Flick ’561 and Flick ’885 each contain disclosures leading toward their combination (see Pet. 19–20). In particular, Flick ’885 discloses vehicle sensors for detecting vehicle movement (Ex. 1003, 1:27–28, 1:32–33), and Flick ’561 discloses use of GPS to more broadly track vehicle movement (Ex. 1004, 1:25–28 (such as to enable recovery of a stolen vehicle)). Patent Owner argues, however, that “detecting local vehicle movement is not the same as tracking vehicle movement,” and thus “doing something with ‘movement’ does not provide any leading, or motivation, toward a combination” of Flick ’885 and Flick ’561. PO Resp. 25. Patent Owner’s assessment oversimplifies these disclosures in discounting their similarities and overlap. Flick ’885 broadly discloses use of “[v]ehicle security systems” to deter, e.g., “vehicle theft,” and notes use of sensors to monitor movement in and around the vehicle. Ex. 1003, 1:21–33. Flick ’561 also broadly discloses use of vehicle security systems to deter theft, and notes use of tracking devices to aid in recovery of a vehicle should it be stolen. Ex. 1004, 1:23–29. Thus, these patents share many commonalities of disclosure relating to vehicle security systems, and particularly detecting movement to aid in vehicle security, suggesting that the ordinarily skilled artisan would have been motivated to combine their disclosures toward a common purpose of improving vehicle security. Another commonality, persuasively argued by Petitioner, is that Flick ’561 describes an objective of its system is to “permit ready interface to devices in the vehicle, such as those devices which may be part of an existing vehicle security system,” which discloses a motivation to look to a MVCC, such as disclosed in Flick ’885. Pet. 22 (citing Ex. 1004, 2:16–18). Given the substantial overlap of disclosures and purposes, we are not persuaded by Patent Owner’s arguments that Petitioner’s rationale to combine is the result of “hindsight” or is premised on a mere “technical possibility.” See PO Resp. 22–26 (emphasis omitted). And, in any event, the Federal Circuit has explained even pre-KSR that a motivation to combine may be found where the “combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1365 (Fed. Cir. 2006). We do not, however—contrary to Patent Owner’s criticism (PO Resp. 26)—find that the combination of Flick ’885 and Flick ’561 would have been motivated merely by the desire to make a “better” product; rather, that motivation is supported by the overlapping disclosures and purposes of the cited references as well as the technical motivations we identify above. Although we have considered Patent Owner’s arguments and expert testimony carefully, we find that, for the foregoing reasons, Petitioner has shown by a preponderance of the evidence on the complete record that an ordinarily skilled artisan at the time of the claimed invention would have had sufficient reason to combine the teachings of Flick ’885 and Flick ’561 to achieve the claimed invention with a reasonable expectation of success.” slip op. at 28
Patent outcomesUS 8,032,278 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,032,278 - PTAB · Nov 21, 2024 · IPR2024-00914 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–10, 12, and 14–30 on all grounds, finding a reasonable likelihood of prevailing on the Pelio and Chapel obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’456 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, or more particularly, the use of renewable energy in powering datacenters and power management techniques for datacenters.” Pet. 14 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 14. For purposes of this Decision, we agree with Petitioner and determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sources, wherein such power distribution units were “a well-known aspect of datacenter design” (id. at 22–23 (citing Ex. 1005 ¶¶ 2, 19, 51, 79, 99; Ex. 1006 ¶¶ 27, 82; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1015, 3, 4; Ex. 1003 ¶¶ 61–62)); (4) “Pelio recognizes the variability of renewable sources resulting in times where there is insufficient power for computing operations,” and Chapel addresses that problem by teaching “monitoring and controlling power delivery to manage electrical power distribution within a datacenter based on the available power supply” (id. at 23 (citing Ex. 1005 ¶¶ 2, 37, 70, 106; Ex. 1006 ¶¶ 2, 47, 80–83, 90; Ex. 1003 ¶¶ 63–64)); (5) the ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Pelio and Chapel because their teachings are “compatible” and combining them “would have been predictable” and within the skillset of the ordinarily skilled artisan as it was “already known” in the art to collocate datacenters with “renewable generators” and to control a datacenter’s load “in response to a renewable source’s varying power supply” (id. at 24–25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1014, 6; Ex. 1015, 3, 4; Ex. 1016, 2; Ex. 1003 ¶ 65)); and (6) the Pelio-Chapel combination “would predictably result in Pelio’s datacenter containers including Chapel’s teachings for controlling power delivered to servers,” which “would advantageously enable Pelio’s datacenters to better follow the power supply and avoid grid electricity costs when the renewable supply cyclically dwindles,” thus combining “known elements” according to “known methods” to achieve “predictable results” (id. at 25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1003 ¶¶ 68–69)).” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,456 - Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32
- Obviousness (§103) › Analogous artNot reached
“b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - Cub Elecparts Inc. v. Orange Electronic Co., Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00744 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have a bachelor’s degree in electrical engineering and at least one year of experience in sensor/detector design or RF communications (RFIDs)” and “would have a working knowledge of tire pressure management systems and, as most POSA would also be automobile owners, would have had personal experience with tire pressure management systems which have been required in all new cars, trucks, and SUVs in the United States since 2007.” Pet. 17. Petitioner adds that “[e]ducation may substitute for experience and vice versa.” Id.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their ordinary and customary meaning. Pet. 17. Petitioner notes that, in the tire pressure detecting field, terms such as “detector,” “sensor,” and “monitor” relate to the same device and can be used interchangeably. Id. at 17–18. Patent Owner contends that no claim term needs construction to resolve the grounds asserted in the Petition. Prelim. Resp. 16. 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” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s unsupported assertion that tire pressure sensors typically are programmed with only the ID as part of the factory installation is insufficient to establish obviousness in this instance. Petitioner does not provide adequate reasoning or evidence to 11 Petitioner relies on the same analysis of this claim 26 limitation for the substantially similar limitation of claim 27. Pet. 66. Accordingly, our analysis of the claim 26 limitation applies equally to the corresponding limitation of claim 27. art would have known that tire pressure sensors typically are programmed at the factory with a single ID. Furthermore, even if assuming for the sake of argument that Petitioner’s assertion is correct, the Petition fails to explain adequately how or why one of ordinary skill in the art would have modified the combination of Tang and Lemense to store only the old identification in the old tire pressure detector.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,031,064
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.