- PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “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). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - PTAB · Sep 25, 2024 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Al-Shyoukh and Ivanov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Trademark Office under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’074 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Chen’s testimony, Petitioner argues that a person of ordinary skill in the art would have had “a Master’s Degree in Electrical Engineering, or alternatively a Bachelor’s Degree in Electrical Engineering and two years of experience working on analog circuit design.” Pet. 9 (citing Ex. 1002 ¶ 38). At this stage, Petitioner’s argument is uncontested, and it appears to be supported by the types of problems and solutions in the ’074 patent. See, e.g., Ex. 1001, 1:25–2:44. Thus, we adopt the formulation preliminarily for this decision.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“claim constructions that correspond to constructions it expects Patent Owner to assert. See Pet. 20 n.2. After Patent Owner filed its Preliminary Response, Petitioner notified us that the district court in the parallel district court litigation issued a claim construction order interpreting two terms relevant to this proceeding, as shown below: Claim Term District Court’s Construction” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“limitation was indefinite because it was subject to 35 U.S.C. § 112 para. 6 and the ’074 patent failed to disclose sufficient corresponding structure. See Ex. 3001, 9. However, in its Petition, Petitioner adopts what it understands to be Patent Owner’s claim-construction in the parallel proceeding: “that 1[d] is not a means-plus-function element under [§ 112 paragraph 6], and to the extent it is, the claimed function is to enable/disable the biasing circuit for reducing standby current, and the corresponding structure is the signal input line at node M in Figure 3.” Pet. 21–22. Assuming that limitation 1[d] does not invoke § 112 paragraph 6, Petitioner argues that “Al-Shyoukh discloses inputs from a biasing circuit into its LDO but does not specify a design,” but Ivanov discloses a specific design for implementing the recited enable/disable function, and a person of ordinary skill in the art would have had reason to incorporate Ivanov’s design into Al-Shyoukh’s LDO. Pet. 22–26 (citing Ex. 1004, 1732; Ex. 1005, 1:6–18, 3:43–49, 3:54–63, 4:26–33, 5:19–25, 6:7–22, 6:47–54, Figs. 1, 2; Ex. 1002 ¶¶ 60–70). Alternatively, if limitation 1[d] invokes § 112 paragraph 6 and Patent Owner is correct that the corresponding structure is the signal input line at node M in Figure 3 of the ’074 patent, Petitioner argues that this structure is identical to Ivanov’s input line 8. Pet. 26 (citing Ex. 1001, Figs. 1, 3; Ex. 1002 ¶ 69).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,471,074 - PTAB · Sep 12, 2024 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 4–6 and 8 on all asserted grounds, finding a reasonable likelihood that claims 4–6 and 8 are obvious over Lee1 and Lee2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . 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.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’207 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We preliminarily adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When construing claim terms, we first review the language of the claims. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). The claim recites four terms: “preambleInitialReceivedTargetPower(0),” “preambleInitialReceivedTargetPower(1),” “powerRampingStep(0),” and “powerRampingStep(1).” Ex. 1001, 36:57–62. These terms represent outputs of, or values dependent on, inputs (0) or (1). Id. at 29:30–53; Ex. 2002 ¶¶ 21– 23. Given that claim 4 separately lists initial power values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1),” we are skeptical of Petitioner’s argument that these two values should be construed to mean a single value (i.e., preambleInitialReceivedTargetPower), because that would render the separate listing superfluous. Moreover, if the two values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1)” were construed to mean single value preambleInitialReceivedTargetPower, the additional “(0)” and “(1)” claim language would be superfluous. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”); Dig.-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (noting “the importance of construing claim terms in light of the surrounding claim language, such that words in a claim are not rendered superfluous”); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court’s claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the prior art need not explicitly disclose or explicitly suggest the proposed modification (here, at least according to Patent Owner, making initial power and power ramping dependent on procedure type), the absence of precise teachings regarding the proposed modification does not undermine the grounds of unpatentability. Lee2 discloses initial power and power ramping functions dependent on input. Ex. 1006 ¶¶ 63, 71–74. Specifically, Lee2 discloses using, based on measured signal power (RSRP), event/distance as input for initial power and power ramping. Id. Lee2 does not, nor could it, address using procedure type as input for initial power and power ramping because Lee2 only discloses 1 type of procedure––the conventional 4-step. Ex. 1006, Fig. 3. Per Lee1, reducing from the conventional 4-step to 2-step is a development in the technology to reduce time delay. Ex. 1005 ¶ 6. Although not discussed in Lee1, the prosecution history shows that switching from 4-step to 2-step is similarly based on measured RSRP. Prelim. Resp. 39 (discussing prosecution history); Ex. 4039–40. Patent Owner’s declarant also acknowledges that there is a correlation (albeit unreliable) between RSRP and distance. Ex. 2002 ¶ 27 (“RSRP may or may not correspond to distance in the real world due to various wireless artifacts . . . .”). Accordingly, we are preliminarily persuaded that a person of ordinary skill in the art, facing the needs created by the development of new types of procedures (i.e., the 2-step), and upon recognizing the link between event/distance, procedure type, and measured RSRP, would have, in light of Lee2, seen a benefit and had a reasonable expectation of success in using initial power and power ramping functions dependent on procedure type.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,932,207 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976 - PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
- BurdenNot shown unpatentable
“Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,118,602 - PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507 - PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand
On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.
RulingsRemand decision- RemandOther
“Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61
Patent outcomesUS 8,498,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,498,753 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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 demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042
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.