• Ericsson Inc. v. Dali Wireless, Inc.Instituted
  PTAB · May 17, 2023 · IPR2022-01570 · APJ John R Kenny · IPR · Institution

  The Board instituted IPR on all asserted grounds for claims 1–20, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable as obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “f. Summary In sum, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over Wu and Sabat ’426.10” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 72. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera. Prelim. Resp. 21–26. In its discussion of Fintiv, Patent Owner, in fact, does not address Petitioner’s stipulation. Id. In light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Interim Procedure 3.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “suggests having transceiver 260 (the operator hub) provide radio resources via CPRI. Pet. 35–36. Petitioner asserts that Wu discloses that digitized signals may be transmitted using the CPRI protocol. Id. Further, Petitioner argues that an ordinarily skilled artisan would have been motivated to modify Wu to provide radio resources via CPRI because digital signals are more robust, noise tolerant, and less susceptible to attenuation (allowing the signal to be transmitted over longer distances). Id. at 36. Petitioner asserts that CPRI and other open standards provide a flexible cheaper and more scalable modular environment. Id. According to Petitioner, digital circuitry and components are typically less expensive and more reliable. Id. Petitioner also argues that an ordinarily skilled artisan would have had a reasonable likelihood of success in modifying Wu. Id.” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for petitioner

    “For this Decision, we adopt the constructions set forth in the ’1242 Institution Decision. In particular, for the reasons expressed in the ’1242 Institution Decision, we construe (i) “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including RF carriers, CDMA codes, and TDMA time slots that include underlying data that is transmitted; and (ii) limitation 1.2 as having the recited operator hub provide the plurality of radio resources to a radio access network using the CPRI protocol. ’1242 IPR Institution Decision 9–18. To the extent the parties in this proceeding disagree with either of these constructions, they need to set forth that disagreement in this proceeding and not merely reference arguments set 7 The initial institution decision in the ’1242 IPR (Ex. 2001) was subject to a remand by the Director. The initial institution decision and the institution decision in the ’1242 IPR after remand (i.e., the ’1242 IPR Institution Decision) set forth the same claim constructions and claim construction analysis. forth in papers in the ’1242 IPR. 37 C.F.R. § 42.6(a)(3); see also Consolidated Trial Practice Guide 35 (Nov. 2019)8.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,026,232
• Askeladden L.L.C. v. Kioba Processing LLCInstituted
  PTAB · May 17, 2023 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Institution

  The Board instituted inter partes review of claims 8–23 on all grounds in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. 7 At this stage, neither party presents any objective indicia of non-obviousness. 8 Person of ordinary skill in the art. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “To the extent “transaction controller” is limiting, Petitioner contends the following: As Mr. Zatkovich explains a POSITA would have understood, based for example on his or her knowledge and based on reading feature explanations such as the above, “transaction controller” as used in claims 8-23 with reference to such description of feature would include: (1) a mobile communication device” and (2) a processor (corresponding to processing chip 210 in the disclosure), that comprises a data channel. Pet. 13. (citing Ex. 1002 ¶ 94).9 Petitioner further contends that “a POSITA would understand that [‘transaction controller’] means ‘a mobile user interface device and a processor that comprises a data channel being adapted to wirelessly communication transaction data between said processor and a third party terminal.” Id. (citing Ex. 1002 ¶¶ 90, 95). For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “transaction controller.”” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “4. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 7,110,792
• Askeladden L.L.C. v. Kioba Processing LLCInstituted
  PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution

  The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,792
• Commscope Technologies LLC v. Dali Wireless, Inc.Other
  PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand

  On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.

  RulingsRemand decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,026,232
• Ericsson Inc. v. Dali Wireless Inc.Instituted
  PTAB · Mar 9, 2023 · IPR2022-01345 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 1–22 because the petition showed a reasonable likelihood that claims were obvious over Wu, alone or with Cannon.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–22 of the ’343 patent.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The two proposals are materially similar. Nevertheless, Patent Owner’s proposed level of ordinary skill is more similar to the Board’s adopted level of skill (as proposed by a different petitioner) in the 1432-IPR See Ex. 2006 (1432-IPR institution decision). Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner, modified to insert “about” in place of the open-ended “at least,” which provides no upper bound on the level of experience of one of ordinary skill in the art, as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “(a) RF Carriers, CDMA Codes, and TDMA Time Slots We agree with the parties that “radio resources” encompass RF carriers, CDMA codes, and TDMA time slots. The specification identifies RF carriers, CDMA codes and TDMA time slots as examples of radio resources in several places. For example, a “key function is determining and/ or setting the appropriate amount of radio resources (such as RF carriers, CDMA codes or TOMA time slots) assigned to a particular DRU or group of DRUs to meet desired capacity and throughput objectives.” Ex. 1001, 12:5–10 (emphasis added). As another example, “the DAU Management Control module can adaptively modify the system configuration to begin to deploy, typically . . . slowly, additional radio resources (such as RF carriers, CDMA codes or TDMA time slots) for use by a particular DRU which need those radio resources within its coverage area. Id. at 12:59–64 (emphasis added); see also id. at 12:64–13:2 (describing “certain radio resources (such as RF carriers, CDMA codes or TDMA time slots)” (emphasis added)).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “2. Other Terms At this stage, no need exists to construe any other claim terms expressly to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the 8 This is consistent with the construction of the same term in the related ’499 patent or other patents in district court. See Ex. 2013 (Markman Order, Del.), 8; Ex. 2015 (Markman Transcript, W.D. Tex.), 2–3). 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 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,006,343
• Unified Patents, LLC v. Commworks Solutions, LLCAll claims unpatentable
  PTAB · Feb 13, 2023 · IPR2021-01297 · APJ John R Kenny · IPR · Final written decision

  Claims 1–6, 9–13, and 16–20 are unpatentable under § 103 based on the Rune–ETSI and Pirkola–Rune–ETSI combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or similar post-undergraduate education; and (2) at least two years of experience in mobile telecommunications, with more education substituting for less experience and vice versa.” Pet. 5–6 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not contest Petitioner’s definition of an ordinarily skilled artisan. See generally PO Resp. We adopt Petitioner’s proposed description of an ordinarily skilled artisan as it is supported by Dr. Haas’s testimony and is consistent with the ’846 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “b. Analysis We construe a transport address as “the current address through which the mobile subscriber can be reached,” which is Petitioner’s proposed construction excluding Petitioner’s proposed requirement that a transport address excludes a home address. The Specification supports the above construction. The Specification describes a transport address as “the current address where the subscriber is reachable.” Ex. 1001, 5:14–18. Moreover, Patent Owner does not dispute that a transport address is a current address where the mobile subscriber can be reached. PO Resp. 4–13.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner argues an ordinarily skilled artisan would have had a reasonable expectation of success in combining ETSI’s and Rune’s teachings because both references relate to mobile communications systems employing the same architecture and protocols. Pet. 19. Petitioner asserts that both references are directed to the components and methods used in GSM systems. Id. Petitioner further argues that, combined, these references teach a mobile communications system that recovers a mobile subscriber’s location identity information from one server to another. Id. According to Petitioner, ETSI is part of the standards framework under which Rune’s system exists, so incorporating ETSI’s teachings into Rune’s embodiments would have required at most minor modifications in server or database software and would have yielded predictable results consistent with thoroughly vetted GSM standards. Id. Patent Owner does not dispute that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings, nor does Patent Owner dispute that an ordinarily skilled artisan would have had a reasonable expectation of success in combining these teachings. PO Resp. 13–19. As set forth below, however, Patent Owner disputes that the combination of Rune and ETSI teaches or suggests every limitation of the challenged claims. Id. After reviewing the record, we determine that Petitioner has proven that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings in the manner proposed by Petitioner and had a reasonable expectation of success in so doing. See, e.g., Ex. 1008 ¶¶ 52–56.” slip op. at 28

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Upon review of the record, we determine that Petitioner has proven by a preponderance of the evidence that the combination of Rune and ETSI teaches limitation 1.1. As set forth in Section II.C.1 above, with our construction, a transport address does not have to be an IP address. Thus, we disagree with Patent Owner’s argument that the LMSI is not a transport address because it is not an IP address. Ex. 1008 ¶ 57.” slip op. at 31

  Patent outcomesUS 8,923,846 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,923,846
• Commscope Technologies LLC v. Dali Wireless, Inc.Instituted
  PTAB · Feb 7, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Institution

  The Board instituted IPR on all asserted grounds challenging claims 1–20, finding a reasonable likelihood of unpatentability and declining Fintiv denial based on compelling challenges.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Thus, the record does not support Patent Owner’s proposed requirement that, to be radio resources, the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include underlying data that is transmitted. ii. Our Partial Construction For this Decision, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including RF carriers, CDMA codes, and TDMA time slots that include underlying data that is transmitted.11” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “First, the related limitations in independent claims 12 and 20 clearly specify that an operator hub provides the plurality of radio resources using the CPRI protocol. Claims 12 and 20 each recite “receiving a plurality of radio resources from an operator hub that operates using a Common Public Radio Interface (CPRI) protocol.” Ex. 1001, 14:45–47 (emphasis added), 16:5–8 (emphasis added). From reviewing the Specification, we see no reason why claim 1 should be construed differently from claims 12 and 20 in this regard, and neither party has provided any such reason. Second, the language of limitation 1.2 also supports our construction. Ex. 1001, 13:48–53. The verb “provides” grammatically agrees with the subject “operator hub,” but not with the subject “one or more central nodes.” Id. The verb “provides” is singular and, as such, it agrees with the subject “operator hub,” which is also singular. With Patent Owner’s proposed construction, the subject for the verb “provides” is “one or more central nodes.” Prelim. Resp. 19–20. “One or more central nodes” is a subject comprising a singular term (“one”) and a plural term (“more central nodes”). Grammatically, the verb following a subject with singular and plural terms joined by “or” should agree with the nearest term in the subject to the verb, which with Patent Owner’s construction is “more central nodes.” The Gregg Reference Manual (11th Ed. 2011) (Ex. 3004) ¶ 1005. As mentioned, however, the verb “provides” is singular, and, as such, it does not grammatically agree with the plural term “more central nodes.” Thus, there is grammatic agreement between the subject and the verb “providing,” with our construction, but not with Patent Owner’s. Third, we do not read the Examiner’s quoted statement in the Supplemental Notice of Allowability as setting forth a construction of limitation 1.2. Ex. 1002, 120. The statement appears to merely provide a shorthand description of the limitation. Id. If it were intended to set forth a construction of the limitation, the construction would be erroneous for the statement also indicates that the recited central nodes enable wireless communications. Id. In limitation 1.2, the operator hub, rather than the central nodes, clearly enables wireless communications. Ex. 1001, 13:48–53.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “sufficiently shown that the combination of Hettstedt and Wellington teaches limitation 1.2, that an ordinarily skilled artisan would have been motivated to combine Hettstedt’s and Wellington’s teachings, and that an ordinarily skilled artisan would have had a reasonable expectation of success in combining those teachings. Regarding the disputed issues of a motivation to combine and a reasonable expectation of success, based on the current preliminary record, we agree with Petitioner that an ordinarily skilled artisan would have been motivated to apply Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic). Ex. 1003 ¶ 130. A threshold-based trigger avoids the need for the system to wait for user inputs. Id. Further, a threshold trigger is readily programmable and machine-executable. Id. Additionally, an ordinarily skilled artisan would have been motivated to apply Wellington’s teaching to Hettstedt’s system to improve the adaptability of that system. Id. A benefit of a threshold-based trigger is that system can fine-tune the load balancing by adjusting the threshold without the need to preprogram significant software. Id. We agree with Petitioner that Hettstedt’s and Wellington’s disclosures support their combination. Hettstedt discloses a goal of efficient load balancing. Ex. 1005 ¶¶ 11, 21, 44; Ex. 1003 ¶ 131. Wellington helps achieve this goal by eliminating the inefficiency of waiting for a user’s input. Ex. 1007, 4:50–52; Ex. 1003 ¶ 131. Hettstedt contemplates scenarios where waiting for a user input for load balancing is not realistic such as sudden “hot-spots” that need “dynamic distribution.” Ex. 1005 ¶ 29; Ex. 1003 ¶ 131. Wellington’s addresses this issue, disclosing that “carrier deployment and removal can occur quickly to handle dynamically changing characteristics in cell congestion.” Ex. 1007, 4:50–52; Ex. 1003 ¶ 131. Further, Hettstedt teaches that its system could be made “automatically adaptive.” Ex. 1005 ¶ 28; Ex. 1003 ¶ 131. An ordinarily skilled artisan would have had a reasonable expectation of success in combining Hettstedt and Wellington. Ex. 1003 ¶ 132. Hettstedt discloses how to determine a load. Ex. 1005 ¶ 44. The step of comparing the load to a threshold merely requires adding a simple “if/then” statement (e.g., IF load > threshold, THEN) to Hettstedt’s software. Ex. 1003 ¶ 132. No special components are required, just a standard processor. Id.; Ex. 1006 ¶¶ 40, 48; Ex. 1003 ¶ 132. Further, determining whether the load is beyond a “threshold” is a simple mathematical-type operation. Ex. 1003 ¶ 132.” slip op. at 35

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted

    “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Procedure”), 4–5 (June 21, 2022).19 “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner presents compelling unpatentability challenges. See Sections II, III above. We find that the evidence, if unrebutted in trial, demonstrates that “it is highly likely that the [P]etitioner would prevail with respect to at least one challenged claim.” OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (“A challenge can only ‘plainly lead to a conclusion that one or more claims are unpatentable’ ([Interim Procedure 4]) if it is highly likely that the petitioner would prevail with respect to at least 19 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf one challenged claim.”) (precedential); see also Sections II, III above. As such, we decline to exercise our delegated discretion under 35 U.S.C. § 314(a) to deny the Petition. slip op. at 49

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,026,232
• Unified Patents, LLC v. Sovereign Peak Ventures, LLCAll claims unpatentable
  PTAB · Nov 8, 2022 · IPR2021-00852 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103: claims 1–4 over Ravi and Goetz, and claim 5 over Ravi, Goetz, and Rhee; the Zhu grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner adopts Petitioner’s position that [an ordinarily skilled artisan], at the time of the invention, would have had a (1) an undergraduate degree in electrical engineering or a closely related scientific field, such as physics, computer engineering, or computer science, or similar advanced post-graduate education in this area; and (2) two or more years of experience with video processing. PO Resp. 6 (citing Pet. 8, Ex. 2005 ¶¶ 26–27). After reviewing the record, we find Petitioner’s proposed definition to be reasonable and adopt it. We, however, would reach the same conclusions if were to adopt Patent Owner’s slightly different definition.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “b. Partial Construction We agree with Petitioner that limitation 1.2.4 does not require that its recited retransmission decision be based directly on the bit rates of received packets without any additional or intermediate calculations. The plain language of the limitation merely requires that its retransmission decision be based on the bit rates of received packages. Ex. 1001, 8:16–21. This plain language does not require that the retransmission be directly based on the bit rates of received packages or that the bit rates not be subject to any additional and intermediate calculations. Id. Further, we agree with Petitioner that the Specification does not support requiring that the recited retransmission be directly based on the bit rates of received packages or preclude any additional and intermediate calculations. We credit Dr. Houh’s undisputed testimony that the Specification does not disclose any determinations based on the bit rates of previously received packets. Ex. 1022 ¶ 12. We further credit Dr. Houh’s undisputed testimony that the only bit rate-based determination described in the Specification depends on the bit rates of sent frames, not received data” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Second, Ravi teaches making a retransmission decision based on an estimate of round trip time from when a retransmission request is sent to a server and the time a copy of the missing data packet is received at the client computer in response to the transmission request. Ex. 1003 ¶¶ 79–81. Figure 12 of Ravi “is a flow chart illustrating selective retransmission” of “missing data packets for just-in-time (JIT) reliability.” Ex. 1005, 4:13–14, 11:42–45. In the process of Figure 12, if a skipped packet is not found in a playout buffer, computer 240 computes a Round_Trip_Time for the missing data packet # n+1. Id. at 11:53–56. “The Round_Trip_Time is an estimate of the time beginning from the time a retransmission request is sent to stream server 220 till the time a copy of the missing data packet 240 is received at client computer in response to the retransmission request (step 1230).” Id. at 11:56–60. “If there is sufficient time to reasonably execute a timely retransmission, e.g., the difference between the timestamp of the missing data packet and the timestamp of the currently displayed data packet is greater than the Round_Trip_Time (step 1240), then client computer 240 sends a request to server 220 for a retransmission of the missing data packet (step 1250).” Id. at 11:61–67. Thus, Ravi teaches making a retransmission decision based on an estimate of round trip time for a missing packet. Ex. 1003 ¶¶ 79–83. Third, although Ravi does not expressly explain how it calculates estimated round trip times, those estimates are based on bit rates of previously received data packets. Ex. 1003 ¶ 82. A bit rate is a measure of “speed at which binary digits are transmitted” (Ex. 1017, Microsoft Computer Dictionary 4th ed.) or the “streaming speed of digital content on a network” (Ex. 1019, Microsoft Computer Dictionary 5th ed.14). Ex. 1003 ¶ 82. As Dr. Houh explains, this means that Ravi’s retransmission decision is based on the speed at which that content will be received over the network after examining the speed at which previous content was received (i.e., the receiver estimates how long a future packet will take to receive with knowledge of how long it took to receive previous packets). Id. ¶ 83. Slower bit rates lead to longer round trip times; faster bit rates lead to shorter round trip times. Ex. 1022 ¶ 32. As Dr. Houh sets forth, with 50 Kb video packets and 1 Kb transmission requests, if the bit rate for a network is 50 Kbps, the round trip time would be approximately 1.02 seconds, excluding additional 14 Dr. Houh testifies that although the 5th edition of the Microsoft Computer Dictionary was published in 2002, a POSITA would have recognized this definition of “bit rate” as the “streaming speed of digital content on a network” to be applicable at the time of the ’038 Patent’s May 2000 priority date. Ex. 1003 ¶ 82 n.3. Patent Owner has not disputed this testimony. See generally PO Resp.; Ex. 2005. propagation and queing delays. Id. ¶ 39. If the bit rate speed is 100 Kbps, then the round trip transmission is 0.51 seconds, excluding additional propagation and queing delays. Id. ¶ 40. Thus, the round trip transmission at 50 Kbps is significantly slower than that at 100 kbps. Id. As a result, if the time stamp difference for the packets is 1.00 seconds, the retransmission request would occur with the 100 Kbps bit rate, but not with the 50 Kbps bit rate. Id. ¶ 42. Thus, Ravi’s retransmission decision based on an estimate of round trip time is a retransmission decision based on bit rates of previously received data packets. Ex. 1003 ¶ 82; Ex. 1022 ¶ 42.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Second, an ordinarily skilled artisan would have combined the teachings of Ravi and Goetz based on motivations provided by those references. Ex. 1003 ¶ 103; Ex. 1022 ¶ 61. In Ravi, an overarching consideration in making a retransmission decision is whether there is sufficient time to reasonably execute a timely resubmission. Ex. 1005, 11:61–67; Ex. 1003 ¶ 103. Ravi acknowledges that its algorithm can be modified. Ex. 1005, 12:36–37; Ex. 1003 ¶ 103. Further, Ravi’s goals include “reducing network traffic . . . and further improving network efficiency.” Ex. 1005, 12:5–12; Ex. 1003 ¶ 103. Goetz sets forth a similar goal, noting that its “underlying philosophy is that, if the network resources are available, then they should be utilized to increase the likelihood that the presentation will include more of the media information.” Ex 1006, 15:17– 23; Ex. 1003 ¶ 104. In other words, Goetz motivates an ordinarily skilled artisan to incorporate a bandwidth measure in making retransmission decisions so that the end-user’s presentation includes more information, which in turn provides an improved media presentation. Ex. 1003 ¶ 104. For example, delivering more media information to the user results in a higher quality presentation (e.g., a presentation with higher resolution, or a presentation without substantial skips, or a presentation with fewer blocking artifacts). Id. Thus, we determine that an ordinarily skilled artisan would have been motivated to combine Ravi’s and Goetz’s teachings. Id.; Ex. 1022 ¶ 61. Third, an ordinarily skilled artisan would have had a reasonable expectation of success in combining Ravi’s and Goetz’s teachings. Id. Ravi and Goetz use similar hardware to make retransmission decisions. Ex. 1022 ¶ 62; Ex. 1005, 4:28–5:30; Ex. 1006, 1059–60. In addition, received bandwidth measurement techniques and equations were well known. Ex. 1022 ¶ 62 (citing Ex. 1026, 4:8–34, 13:11–17:37; Ex 1027, 10:28–46, 12:62–13:4).” slip op. at 43

  Patent outcomesUS 6,877,038 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,877,038
• Unified Patents, LLC v. Sovereign Peak Ventures, LLCAll claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00705 · APJ John R Kenny · IPR · Final written decision

  Claims 7 and 8 are unpatentable as obvious over Pearson and H.264; the Board did not reach the Chen and H.264 ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Upon review of the record, we agree with Petitioner’s proposed definition for the ordinary level of skill in the art with the modifications proposed by Patent Owner. We find that this modified definition is reasonable in light of the subject matter involved in the ’457 patent, and adopt this modified definition. In other words, we find that an ordinarily skilled artisan at the time of the invention would have had (1) an undergraduate degree in electrical engineering or a closely related scientific field, such as physics, computer engineering, or computer science, or similar advanced post-graduate education in this area; and (2) two years of experience with video processing. Ex. 1003 ¶¶ 38–40. Further, we find that “[m]ore experience [could] substitut[e] for less education, and vice versa.” Id. ¶ 39.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Patent Owner that the term “block decoding information” does not require construction. Claim 7 recites that its “block decoding information” is “a parameter necessary for decoding another block group from among the plurality of macroblocks.” Ex. 1001, 30:13–33. Petitioner’s proposed construction adds the requirement that the “block decoding information” be “a parameter necessary for decoding other macroblock groups,” rather than just another block group. Pet. 20 (emphasis added). Petitioner provides no persuasive explanation of why “block decoding information” should have such an additional requirement. Id. The definition that Petitioner cites from the Specification for “block decoding information” has no such requirement. Ex. 1001, 3:17–19. Petitioner, in fact, acknowledges that the definition in the Specification does not require that “block decoding information” be “a parameter necessary for decoding other macroblocks” by arguing that “[t]he ’457 patent explicitly defines 9 Paragraph 33 of Exhibit 1003 indicates that the quoted language is also found in the abstract of the ’457 patent, but the full quoted phrase does not appear in that abstract. Ex. 1001, code (57). ‘block decoding information [as] being a parameter necessary for decoding an other [sic] block group.’” Pet. 20 (emphasis added). The remainder of Petitioner’s construction for “block decoding information” by itself is already recited in claim 7 (i.e., a parameter necessary for decoding a macroblock). Thus, construing “block decoding information” to be “a parameter necessary for decoding a macroblock” is not necessary because claim 7 expressly recites that requirement. Further, we do not want to construe the term “block decoding information” in isolation in a manner that would render its express definition in claim 7 superfluous, as constructions that render claim language superfluous are highly disfavored. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous.”) (quoting Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017)). Therefore, we determine that the term “block decoding information” in isolation does not require construction. Claim 7 properly defines the term. 10” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “the Specification, in fact, teaches that a macroblock line is a block group. Ex. 1001, 8:1–7. In describing decoding unit 500, the Specification states that “[t]he variable length decoding unit 500 performs variable length decoding on a block group including plural macroblocks (for example, a macroblock line) to be decoded.” Id. (emphasis added). Further, Petitioner has not objected to characterizing a row as a block group. Pet. Reply 2–3. Thus, no party has expressed any objection to construing a block group as encompassing a row or line of macroblocks. Petitioner, however, objects to limiting the term “block group” to a row or line of macroblocks. Pet. Reply 2–3. Petitioner argues that the term, if construed, should be construed more broadly. Id. Patent Owner disagrees. PO Resp. 12; Sur-reply 7. For purposes of this Decision, we do not need to determine whether a broader construction of “block group” is warranted or whether, in particular, Petitioner’s broader proposed construction is correct. Construing the term “block group” as encompassing the undisputed subject matter of a row or line of macroblocks is all that is needed to resolve the disputes in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Thus, we construe the term “block group” as encompassing a line or row of macroblocks.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “3. Assertion of Analogous Art Petitioner argues that Pearson and H.264 are analogous art because they are in the same field of endeavor as the ’457 patent, which Petitioner describes as systems and methods of decoding video data. Pet. 26–27 (citing Ex. 1001, 1:7–10; Ex. 1005, 1:6–9, Ex. 1006 § 1; Ex. 1003 ¶ 83). Patent Owner does not dispute this assertion. After reviewing the record, we determine that Petitioner has proven that Pearson and H.264 are analogous art.” slip op. at 17

  Patent outcomesUS 9,042,457 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,042,457
• Juniper Networks, Inc. v. Correct Transmission, LLCNo claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00682 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–7, 9, 12–16, 27, and 28 were not shown unpatentable over Kuo and Balakrishnan or Casey and Balakrishnan because reasonable expectation of success was not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’465 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, (a) we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang (Ex. 1003 ¶¶ 64–68); and (b) we determine this would have provided a sufficient level of skill in light of the technology at issue in the ’465 patent and prior art.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 8 (“Juniper construes each of the ’465 claim terms as having its ordinary and customer meaning.”); PO Resp. 11 (“Patent Owner submits that no claim terms require construction beyond their plain and ordinary meaning.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In particular, we determine that Petitioner has not proven, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Neither the Petition nor the declaration from Dr. Yang that accompanied the Petition analyzed whether the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Pet. 49–68; Ex. 1003 ¶¶ 52–63, 186–229; see generally Pet. 1–84; Ex. 1003. Dr. Yang did not submit a second declaration in this proceeding. Pet. Reply (Exhibit List). Nevertheless, Petitioner argues that it proved the requisite reasonable expectation of success with the evidence that it cited in the Petition for other issues (e.g., motivation to combine) including Dr. Yang’s declaration testimony on those issues, Dr. Yang’s cross-examination testimony, Dr. Akl’s cross-examination testimony, and additional evidence that Petitioner cited in its Reply. Pet. Reply 8–11. But the expert testimony and other evidence cited by Petitioner fail to prove, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. We turn first to the Petition itself.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 225 (cited by Pet. 65–67 n.191, which in turn is cited by Pet. Reply 8–10 n.28); see Ex. 1003 ¶¶ 217–224. To the extent that this testimony was intended to evidence a reasonable expectation of success, rather than a reason or motivation to modify Kuo (or combine Kuo and Balakrishnan) as expressly stated in the Petition, such testimony is conclusory. Dr. Yang refers to “predictable results” in the abstract, without explaining what those “results” are, how they relate to the invention of claim 1, or how such “results” may evidence the ordinarily skilled artisan (not an expert) having a reasonable expectation that provisioning Kuo’s disclosed system to periodically synchronize forwarding tables would be successful. Moreover, even if “Kuo’s network provides multipoint connectivity similar to Balakrishnan” (Ex. 1003 ¶ 225 (emphasis added)), this is merely a high-level feature or goal of many such networks and does not itself show why the skilled artisan would have had a reasonable expectation of success in modifying Kuo’s particular network to periodically synchronize forwarding tables given the particular design of Kuo’s system, and given the complex nature of virtual private local area networking technology (and computer networking technology generally). Thus, we do not find this testimony persuasive. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 28

  Patent outcomesUS 7,283,465 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,283,465

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.