• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelOther

    “In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 13

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

    “In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing 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.”)). We invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14

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

    “This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31

  Patent outcomesUS 10,312,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,312,335
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing 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) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

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

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Peloton Interactive, Inc. v. NEC CorporationNo claims unpatentable
  PTAB · Mar 3, 2025 · IPR2023-01239 · APJ Michael J Strauss · IPR · Final written decision

  Claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 were not determined unpatentable because the asserted obviousness grounds failed to establish the claimed code-rate determination.

  RulingsFinal written decision

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by the testimony of Dr. Reader, argues that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree, or equivalent, in electrical engineering, computer science, a related field, and 2–3 years’ experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 14 (citing Ex. 1006 ¶¶ 67–69). Petitioner further argues “[o]ne having less education but more practical experience, or more education and less experience, might also meet this standard.” Id. Patent Owner does not dispute Petitioner’s definition or offer an alternative level or skill in the art. PO Resp. 12 (citing Pet. 14; Ex. 2012). Instead, “[f]or the purposes of this PO Response only, Patent Owner applies Petitioner’s definition of POSITA.” Id. Thus, on this record, the parties agree upon the proposed level of ordinary skill in the art, and this level is consistent with our review and understanding of the technology and descriptions in the ’101 patent and the prior art references that disclose content delivery systems. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “the gap between the playback deadline and the target schedule, (td(n) − tT(n)), is the target buffer duration, i.e., ‘the desired client buffer duration (in client time).’” Id. at 22–23 (quoting Chou ¶ 74). Petitioner also argues that “in efforts to match upper bound tb(n) to target schedule tT(n), Chou takes into consideration the time duration between target schedule tT(n) and the playback deadline td(n).” Thus, it appears Petitioner assembles three separate and distinct time intervals from Chou’s timing diagrams and equations to construct one contiguous time interval equivalent to claim 1’s remaining time. However, Chou does not recognize the time interval that Petitioner posits, and Petitioner has not persuasively shown that this combined time interval exists as a teaching in the prior art and is used as part of any step or decision involved in determining the code rate. As admitted by Petitioner’s expert, Dr. Reader, Petitioner’s analysis “used the claims as a road map to find limitations in the prior art.” Ex. 2015, 76:4–9 (Reader Deposition Transcript). See also Tr. 28:20–31:2 (Petitioner’s response to whether identification of and integration of separate time ranges described by Chou is hindsight reconstruction, Petitioner argues Chou’s device operates such that code rate is based on remaining time). Under the circumstances, this is improper because Petitioner and Dr. Reader do not justify this combination of separately identified time ranges except based solely on hindsight reconstruction of the claimed invention. However, even if that were not the case, we are not persuaded that Chou or the other asserted prior art references suggest using the combined time interval td(n) − ta(n) as the basis for any decision related to determining the code rate.” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “d) Analysis In our Institution Decision, although expressing some uncertainty with respect to certain of Patent Owner’s arguments on the preliminary record then before us, “we [were] not persuaded by Petitioner’s contentions that [(1)] Wang teaches [1d]’s code rate” (Dec. 53 (citing Pet. 62–65) or (2) “a POSITA would have been motivated to combine the teachings of Chou and Wang” (id. at 54 (citing Pet. 74)). Petitioner does not dispute those determinations in its Reply or otherwise. Furthermore, Petitioner does not address or otherwise dispute Patent Owner’s arguments challenging the asserted obviousness of claims 1, 4–6, 10–16, and 19–26 over the combined teachings of Chou and Wang. Thus, for at least the reasons set forth in our Institution Decision, we agree with Patent Owner that Petitioner fails to show that (1) one skilled in the art would have combined the teachings of Chou and Wang or (2) the combined teaching of Chou and Wang renders limitation 1(d) obvious. e) Conclusion Regarding Claim 1 For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that independent claim 1 is unpatentable over the combination of Chou and Wang.” slip op. at 47

  Patent outcomesUS 8,752,101 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,752,101
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6

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

    “The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7

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

    “Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic LimitedInstitution denied
  PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,664,059
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12

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

    “We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24

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

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23

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

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution denied
  PTAB · Feb 4, 2025 · IPR2024-01144 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because AT&T failed to show a reasonable likelihood that claims 1–22 were obvious over either Nokia and the 3GPP-Standard or Ericsson and the 3GPP-Standard.

  RulingsInstitution decision

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

    “§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any responses thereto shows “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). Taking into account Innovative Sonic’s Preliminary Response, AT&T’s Preliminary Reply, and Innovative Sonic’s Preliminary Sur-reply, we conclude that the information 1 We do not reach whether we should exercise our discretion to deny the Petition under Fintiv because, as we explain below, we deny the Petition based on the merits. See infra Sections II.B.5 and II.C.1. presented in the Petition does not establish that there is a reasonable likelihood that AT&T would prevail in demonstrating at least one of claims 1–22 of the ’489 patent is unpatentable. We, therefore, deny AT&T’s Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Relying on the testimony of Dr. Hansen, AT&T argues the following: [a]s of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’489 patent . . . would have had a [Bachelor of Science] in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A [person of ordinary skill in the art] would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. More education may supplement practical experience or vice versa. Pet. 14 (citing Ex. 1002 ¶ 368). In the Preliminary Response, Innovative Sonic does not address AT&T’s assessment of the level of skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt AT&T’s uncontested assessment of the level of skill in the art because it is consistent with the ’489 patent and the asserted prior art.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “issue fares no better. With one exception, Dr. Hansen, relies on the same disclosures of the Update for 3GPP TS 36.331 v.9.4.0 to support his testimony, which, as we explain above, does not account for the plain language of the disputed limitation. Compare Pet. 26–27, 43, with Ex. 1002 ¶¶ 87–90. In addition, Dr. Hansen testifies that a person of ordinary skill in the art would have understood that “the E-UTRAN configuring the UE with one or more SCells would necessarily include the configuring of at least one SCell by a source eNB to a UE.” Ex. 1002 ¶ 91 (emphasis added). But neither AT&T nor Dr. Hansen establish inherency in its obviousness analysis. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194– 95 (Fed Cir. 2014) (recognizing that “inherency may supply a missing claim limitation in an obviousness analysis,” but limiting the doctrine of inherency “only when the limitation at issue is the ‘natural result’ of the combination of prior art elements” (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Apart from the conclusory assertion above, Dr. Hansen does not identify sufficient evidentiary support demonstrating that the requirement identically recited in each of independent claims 1 and 12 of “configuring at least one SCell by a source eNB to a User Equipment (UE)” would have been the “natural result” flowing from the Update for 3GPP TS 36.331 v.9.4.0’s disclosure of the E-UTRAN configuring the UE with at least one SCell. PAR Pharm., 773 F.3d at 1195. Accordingly, we do not credit Dr. Hansen’s testimony that implicates the doctrine of inherency because it not supported by evidence of record.” slip op. at 17

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

    “In the Petition, AT&T contends that “the Board does not need to expressly construe any [claim] terms to resolve the arguments presented herein” because the asserted prior art “discloses all limitations under any plausible construction.” Pet. 14 (citing Ex. 1002 (Declaration of Dr. Christopher Hansen) ¶ 456). In the Preliminary Response, Innovative Sonic “agrees with [AT&T] that no [claim] term needs to be construed.” Prelim. Resp. 4 (citing Pet. 14). For purposes of this Decision, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,237,489

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.