- PTAB · Jul 9, 2024 · IPR2024-00115 · APJ Elizabeth M Roesel · IPR · Institution
Instituted review of claims 1–22 on all petitioned grounds after finding a reasonable likelihood of prevailing on claim 1 as obvious over Scherer and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion for Claim 1 We determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to claim 1 as obvious in view of Scherer and Lee.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“1 Petitioner states that “if instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 102. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), at 3–4, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to section II.A).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Reasons to Combine Petitioner contends that it would have been obvious to modify Scherer’s connector in two ways. Pet. 14. First, Petitioner asserts it would have been obvious “to orient first and second optical fiber ferrules along the transverse axis of Scherer’s connector.” Id. (citing Ex. 1011 ¶¶ 128–133). Second, Petitioner asserts it would have been obvious “to modify Scherer’s extender 330d and lever 360a such that the edge defining the front end of the opening slides longitudinally along the upper surface of the lever 360a when the extender 330d is pulled rearwardly to depress the lever 360a.” Id. (citing Ex. 1011 ¶ 134). Addressing the first modification, Petitioner contends that it would have been obvious to arrange an array of fibers perpendicular to the longitudinal axis of the fiber, and the choice between the horizontal and vertical axes is “merely choosing one of the few and finite available options.” Pet. 14–15 (citing Ex. 1011 ¶¶ 135–144). Petitioner contends that, in view of the dual connections shown in Scherer Figures 11–13, it would have been obvious to modify the connector of Scherer Figure 14 “to make multiple connections from a single optical fiber transmission line 52a.” Pet. 15 (citing Ex. 1011 ¶¶ 135–144), 20 (citing Ex. 1011 ¶¶ 145–159). According to Petitioner, Lee provides an alternative solution for making multiple connections from a single optical fiber cable. Pet. 16, 21. Petitioner contends that a desire for increased connector density would have motivated a POSITA “to modify Scherer’s connector hood to include multiple ferrules positioned relative to the lever as disclosed in Lee.” Pet. 16–17 (citing Ex. 1011 ¶¶ 135–144), 22. Petitioner’s first modification relates to claim elements 1.1 and 1.3, as discussed below. Pet. 19–22, 26– 27.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be 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. See Phillips, 415 F.3d at 1313–14. “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)). Petitioner asserts that the “Petition affords all terms their ordinary and customary meaning.” Pet. 4. For purposes of this Decision, no claim terms require express construction.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,307,369 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentablePTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand
On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.
RulingsRemand decision- RemandOther
“with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20
Patent outcomesUS 6,529,561 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,529,561 - PTAB · May 22, 2024 · IPR2024-00137 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 9, 10, 12, 20, 21, and 23 over Chitrapu and TS 36.300, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“5 weigh in favor of exercising our discretion to deny institution. For the reasons discussed below, we conclude that Fintiv factors 1–5 weigh in favor of denying institution. Because Fintiv factors 1–5 favor denial of institution, we must also determine whether the Petition presents compelling merits. See” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“reference “explicitly suggests a POSITA[5] look to 3GPP standards” (Pet. 25–26 (citing Ex. 1003 ¶ 7; Ex. 1005 ¶ 117)) and the secondary reference is a 3GPP Technical Specification (Ex. 1223, 1). Petitioner’s argument is supported by Chitrapu and TS 36.300, respectively. See Ex. 1003 ¶ 7 (describing systems “constructed in accordance with current specifications of the 3rd Generation Partnership Program”); Ex. 1223 (describing that “[t]his technical Specification has been produced by the 3rd Generation Partnership Project”). At this stage, Patent Owner disputes Petitioner’s argument for only one limitation of claim 9 (Prelim. Resp. 8–20) and we find Patent Owner’s dispute does not undermine Petitioner’s showing on the current record. See infra § IV.D.3.c. For these reasons and the reasons discussed further below (see § IV.D.3), based on the record before us, we determine the Petition presents a compelling, meritorious challenge for independent claim 9. We, therefore, determine the facts of this case do not warrant discretionary denial.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated to implement” Chitrapu’s “‘smart handover’ process” “using the [more detailed description of the steps of handover] of TS 36.300” (Pet. 26– 30 (citing, e.g., Ex. 1003 ¶ 74; Ex. 1005 ¶¶ 120–123, 125, 160–162, 168, 178)), we find, based on the preliminary record, that Petitioner’s reason is supported by Chitrapu and TS 36.300, respectively. Petitioner, more specifically, argues “while Chitrapu describes the ‘negotiation’ and ‘execution’ of these steps [that is, steps of a handover] at a high level, the specific implementation details of these messages are not disclosed,” but TS 36.300 describes “the specific messages associated with that implementation.” Pet. 26–27.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“11 of Chitrapu discloses or suggests that the source base station determines whether or not the UE is ‘current covered’ by the target base station before initiating a handoff.” Prelim. Resp. 9–10. We find, based on the preliminary record at this juncture, that Patent Owner’s argument is contrary to Chitrapu’s disclosures. In particular, Chitrapu describes, “[w]here a handover is to occur, the new serving base station will first implement the selected beams determined for it and acquire the UE communication, before the original serving base station implements its new beam pattern.” Ex. 1003 ¶ 109 (emphasis added). Chitrapu describes expressly that a handover involves a “new” serving base station that differs from the “original” serving base station and that the “new serving base station . . . acquire[s] the UE communication.” Id. Chitrapu describes that, as illustrated in Figure 11, the “general process for conducting ‘smart’ handover” may “result in no handover being made.” Id. ¶ 108 (emphasis added). Figure 11 similarly states that either “THE TARGET BASE STATION,” which differs from the “SERVING BASE STATION” is determined and a “HANDOVER” is executed or the serving base station “MAINTAINS COMMUNICATION THROUGH REFOCUSING BEAM.” Id. at Fig. 11. The handover determination itself is a determination that a “UE” communication, will be acquired by a “new serving base station.” See, e.g., Ex. 1003 ¶ 109. Based on the preliminary record before us at this juncture, we find that the requirement of “a determination . . . that the wireless device is not currently covered by the first wireless network but is capable of being covered by the first wireless network” recited in limitation 9.a(2) is taught by Chitrapu’s handover determination. See, e.g., Ex. 1003 ¶ 109, Fig. 11; see also id. ¶ 106 (describing a “handover consideration process” involving “candidate cells,” which also are referred to as “candidate target cells”), ¶ 107 (describing “if a neighboring cell is not able to efficiently accept the UE, it may be determined that the original cell is best situation and should continue to serve the UE” (emphasis added)), ¶ 108 (describing a “general process for conducting ‘smart’ handover, which may actually result in no handover being made” (emphasis added)).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,094,888 - PTAB · Apr 30, 2024 · IPR2024-00135 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 23–27 on all asserted grounds, finding a reasonable likelihood that claim 23 is obvious over Chang; it deferred claim 27’s merits for trial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶41. This description is approximate and a higher level of education might make up for less experience and vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Ex. 1003, ¶41. More education can supplement practical experience and vice versa. Ex. 1003, ¶41.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We preliminarily find that Petitioner’s proposed construction that “data updates” are “data that needs to be sent to the mobile device” (Pet. 19) is consistent with the recitation in the preamble and element 23.4 of receiving “data updates” and “a data update,” respectively. Claim 23 recites a “device,” rather than “the mobile device.” Claim 23, however, also recites “coverage by a first network” and “coverage by a second network” (emphasis added), which is consistent with Petitioner’s proposed construction that the “device” is a “mobile device.” We also preliminarily find that Petitioner’s proposed construction is consistent with the ’196 patent Specification. In particular, the ’196 patent Specification describes an interval use device receiving “a data update over the network,” which “may be for a single application” or “may be for multiple applications.” Ex. 1001, 11:9–25. The ’196 patent Specification describes exemplary applications as including “social networking applications, email, Really Simple Syndication (RSS) feeds, map updates, game update[s], sports score update[s], or the like.” Id. at 6:59–64; see also id. at 10:23–35 (providing the same list of exemplary applications). Regarding the recitation in claim 23 of a “device,” rather than “the mobile device,” the ’196 patent Specification is consistent with Petitioner’s proposed construction. The ’196 patent describes that computing device 700 “may be configured as a[n] interval use device” (id. at 15:23–25) and that computing device 700 “may be implemented as a portion of a small-form factor portable (or mobile) electronic device.” Id. at 16:59–65 (emphasis added). Also, regarding “coverage” recited in claim 23, the ’196 patent describes “providing network coverage by cycling through beam shape coverage configurations” (id. at code (57)) and that “coverage” is provided by “wireless communication networks.” See, e.g., id. at 1:14–16. On the record before us, we preliminarily find that Petitioner’s argument that “data updates” are “data that needs to be sent to the mobile device” (Pet. 19) is consistent with the intrinsic evidence of record. See DePuy, 469 F.3d at 1014. We, therefore, adopt Petitioner’s proposal for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“‘data updates’ limitation.” Id. at 19 (citing Ex. 1008, 3–7; Ex. 1003 ¶ 63). Petitioner argues, taking Patent Owner’s view, “[i]t would also have been obvious to a POSITA[4] that checking the current version of a digital asset and sending the newest version to a new electronic device would be equally applicable to electronic devices that have received previous versions of the digital asset.” Id. at 19–21 (citing Ex. 1004, 8:57–64, 11:35–44, 13:3–8, 14:52–60; Ex. 1003 ¶¶ 65–67). Petitioner argues a “POSITA would be motivated to deliver and install the most up-to-date version of a digital asset in order to improve user experience, such as providing improvements, new features, or bug fixes to the older digital asset.” Id. at 21 (citing Ex. 1003 ¶ 67).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . 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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - PTAB · Apr 2, 2024 · IPR2023-01410 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR of claims 1–7 and 9–12 on all asserted grounds after finding a reasonable likelihood of success on at least one claim under either §103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’075 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’075 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a graduate degree in mechanical engineering, physics, materials science, electrical engineering, or a related discipline, coupled with at least four years’ experience in designing backlighting systems for displays; the level of ordinary skill in the art is approximate and additional education could make up for a lack of experience or vice-versa. Pet. 8 (citing Ex. 1003 ¶ 28). Patent Owner argues that a person of ordinary skill in the art would have [had] (a) a Bachelor’s of Science degree in a technical field and at least four years of experience in the field of design and/or manufacture of display systems; (b) a Master’s of Science degree in a technical field and at least two years of experience in the field of design and/or manufacture of display systems; or (c) a PhD in a technical field relating to the design and/or manufacture of display systems. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. 4 Neither party presents objective evidence of nonobviousness at this stage of the proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We preliminarily find that column 6, lines 47 through 51 of the ’075 patent provides a meaning of the term “on.” That disclosure in the ’075 patent states that “[i]t will be understood that when an element such as a layer, region or substrate is referred to as being ‘on’ or extending ‘onto’ another element, it can be directly on or extend directly onto the other element or intervening elements may also be present.” Ex. 1001, 6:47–51 (emphasis added). Our preliminary finding is consistent with both parties’ constructions proposed in the parallel district court case. Prelim. Resp. 4; Ex. 2003, 4. We agree with Patent Owner that the disagreement between the parties in the parallel district court case appears to be of form, rather than substance. Prelim. Resp. 5. We decline to resolve that dispute here. We also preliminarily find that Patent Owner’s construction in this proceeding prohibiting airgaps is not consistent with the meaning of the term “on” based on the intrinsic record as understood based on the arguments made at this early juncture. Because intervening elements, such as a diffuser sheet, may be present, the intrinsic record does not support a narrow meaning of the term “on.” As will be discussed further below, the ’075 patent describes in “contrast” to the term “on,” the term “directly on” means “there are no intervening elements present.” Ex. 1001, 6:51–53. We, therefore, preliminarily find that construing “on” such that airgaps may be present is consistent with the claim language and patent disclosure. Ex. 1001, 6:47–51, 21:51–22:3.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also preliminary find that Mok does not teach away from Petitioner’s proposed combination. We agree with Patent Owner to the extent that Mok discloses that “[g]enerally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.” Ex. 1005 ¶ 23. Mok’s description, however, continues as follows “[b]y way of example, in one embodiment, the diffuser 16 is separated from the base panel 12 by a distance 48 of about 50 millimeters (mm) or less.” Id. Our reviewing court has explained that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). We preliminarily find that the relative advantages (e.g., reduced panel thickness) and disadvantages (e.g., reduced light uniformity) of modifying Mok’s lighting panel to include Holman’s stacking arrangement amount to a tradeoff is a decision within the level of an ordinarily skilled artisan. Indeed, Mok acknowledges this tradeoff. See Ex. 1005 ¶ 23 (“Generally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.”). For the reasons given, we determine that Petitioner has shown sufficiently that each of Mok alone and the combination of Mok and Holman teaches element 1D for purposes of institution. We also preliminarily find Petitioner’s reasons for combining the asserted art are sufficiently persuasive for institution. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (see § III.E.1) also are sufficient for purposes of institution. We preliminarily find that Petitioner’s showing is not undermined by Patent Owner’s arguments at this early stage.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,294,075 - PTAB · Mar 28, 2024 · IPR2024-00194 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 3–6 and 10 on all asserted grounds after finding a reasonable likelihood that claims 3 and 10 are obvious over Setton and Baker.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We determine that this factor weighs against discretionary denial. Some work has been completed, but the Texas litigation is in its early stages. Although infringement and invalidity contentions have been served (Ex. 1022, 5; Ex. 2002, 5), the majority of the work still remains to be completed, including the Markman briefing and order, fact discovery, and expert discovery (Ex. 2002, 3–5; accord Ex. 1022, 3).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion For the reasons provided above, Petitioner has sufficiently shown (for purposes of institution) that an ordinarily skilled artisan would have been motivated to combine Setton and Baker as proposed, and that the combination teaches, suggests, or renders obvious each limitation of independent claim 3. We have considered Patent Owner’s arguments, but they are unavailing at this stage and on this record. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail in establishing that the subject matter of claim 3 would have been obvious over Setton and Baker.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed level of skill. We are satisfied that Petitioner’s definition generally comports with the level of skill necessary to understand and implement the teachings of the ’099 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Reddy. See Ex. 1003 ¶ 19. In addition, Patent Owner appears to agree with Petitioner regarding the educational background and number of years of work experience. Compare Prelim. Resp. 32, with Pet. 9. At this stage, given the disclosure of the ’099 patent, we do not agree with Patent Owner’s contention that the ordinary artisan would have had experience with “data networks and video streaming systems” generally, rather than “video teleconferencing systems” specifically. However, the analysis in this Decision would not have changed if we had instead adopted Patent Owner’s proposal.10” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“At this stage, we do not agree with Patent Owner’s understanding of the claim’s plain language. Elements 3.1.1 and 3.1.2 require that the “plurality of endpoints” be “configured such that a film strip with frames containing reduced-size video feeds from the conference participants is displayed at the mesh endpoints.” This language does not require that each of the endpoints supply a video feed; rather, it requires that the conference participants supply the video feeds. Also, the claim does not appear to include language that requires any of “the conference participants” to be associated with the non-mesh connected endpoint. Patent Owner assumes that “the conference participants” are the individuals participating from any and every endpoint (see Prelim. Resp. 37), but it fails to sufficiently support this understanding. According to Patent Owner, the claim’s later reference to “‘the mesh-connected conference participants’ . . . show[s] that the scope of ‘the conference participants’ is broader than just ‘mesh-connected endpoints.’” Prelim. Resp. 37; see Ex. 1001, 18:36. We disagree. Even if that claim language demonstrates that some “conference participants” are associated with mesh- connected endpoints, it does not show that the set of “conference participants” is necessarily broader. In fact, the claim language cuts the other way—the claim refers to “the mesh-connected conference participants,” indicating that this term derives antecedent basis from (and is the same as) the “conference participants” referenced earlier in the claim. Moreover, the claim later refers to “a user located at the non-mesh connected endpoint” (Ex. 1001, 18:42–43), which further indicates that the “conference participants” need not include a person associated with the non-mesh connected endpoint. Although Patent Owner points to two passages from the Specification to support its position (see Ex. 1001, 5:13–17, 17:47–49), neither suggests a particular meaning for this claim phrase. One passage describes a particular embodiment in which conference participants receive video streams “from all other endpoints” (id. at 5:13–17),11 and the other simply states that the described system allows a non-mesh endpoint to participate “in much the same way” as mesh-connected endpoints (id. at 17:47–49). In addition, we have assigned little weight to Dr. Sharony’s testimony regarding the meaning of this phrase (see Ex. 2001 ¶ 94) because he reiterates Patent Owner’s legal arguments without either providing technical background or addressing the meaning of terms to an ordinarily skilled artisan. See Philips, 415 F.3d at 1318.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,204,099 - Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution deniedPTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,099,383 - PTAB · Feb 9, 2024 · IPR2023-01233 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that the challenged claims would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the following six factors when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”) (footnote omitted); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)) (“Becton Dickinson”).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’574 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’574 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although Petitioner’s and Patent Owner’s proposed definitions are similar, Petitioner’s definition is more flexible, as it provides that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Compare Pet. 13, with Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We are not persuaded that a skilled artisan would necessarily require at least a Master’s Degree in Mechanical Engineering or at least three or more years of experience in either engine systems or engine control systems, as Patent Owner proposes. See Prelim. Resp. 15. We find Petitioner’s definition, which applies a more flexible approach, is consistent with the ’574 patent and the asserted prior art. Pet. 13; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,581,574
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.