- DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Kliger identifies the problems of splitter reflections causing inter- symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and separately over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are. Furthermore, the ’518 patent’s teachings are applicable to any network experiencing multipath reflections which degrade the ability to achieve high data rates regardless of the media over which those signals are transmitted. Id. at 4:19–32. Consequently, we determine the skill level as follows: A POSITA would have at least a bachelor’s degree in electrical engineering, computer engineering, or a related field and two to three years of experience working in broadband communication networks. Additional education could substitute for professional experience, or vice versa. For the foregoing reasons, our adopted skill level is consisted” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Kliger and Isaksson are analogous art to the ’518 patent because they are from the same field of endeavor as the patent—wired networking systems— and because they are reasonably pertinent to the problem at issue in the patent—overcoming wired-network signal impairments.” Pet. 27 (citing Ex. 1004 ¶¶ 76–80); Pet. Reply 3–12. Patent Owner disagrees with Petitioner’s contention that Isaksson is analogous art. PO Resp. 12–26; PO Sur-Reply 16–25. For the following reasons, we determine that Petitioner has shown by a preponderance of the evidence that Isaksson is analogous art to the ’518 patent because it is reasonably pertinent to the problems identified in the ’518 patent. The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable as obvious, principally over Amit and Jacobsen and, for additional claims, Amit, Jacobsen, and DSL-Book; the Board did not reach grounds 1 and 2.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. Ex. 1002 ¶¶ 17–18; Ex. 2007 ¶¶ 57–58.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Amit is restricted to “single frequency” modulation. PO Resp. 52–56. As Petitioner notes, Amit describes that its HCNM modem uses a channel (e.g., DOCSIS) containing two sub-channels for upstream and downstream signals. Pet. 24 (citing Ex. 1005, 15:18–28). This meets Patent Owner’s definition for multicarrier communications as multiple subcarriers to provide communications of a single channel. PO Sur-Reply 6. We further note that the claims do not recite “multicarrier communications” so the distinction Patent Owner attempts to draw is not supported by commensurate language in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in a claim cannot be relied upon for patentability). Furthermore, even if Amit were restricted to single carrier modulation, as Patent Owner argues, Petitioner relies on Jacobsen for its teaching of multicarrier modulation. Pet. 62–66; PO Resp. 52–56. In essence, Patent Owner attacks Amit individually and does not properly consider how a POSITA would have understood the combined teachings of Amit and Jacobsen. “Non-obviousness cannot be established by attacking references individually where the [challenge] is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” slip op. at 26
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–2, 4–6, 8–10, 12–14, and 16–17 as obvious over Amit and Jacobsen; claims 2–3, 7, 9–13, 15, and 17 as obvious over Amit, Jacobsen, and DSL-Book.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- BurdenUnpatentable
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.No claims unpatentablePTAB · Jul 21, 2025 · IPR2021-01150 · APJ Stacey G White · IPR · Remand
On remand, the Board held that Petitioner had not shown claims 1–18 unpatentable under § 103 over Paxton, Sutton, and Ivershen because the combination did not teach or motivate transmission responsive to correlation.
RulingsRemand decision- RemandOther
“the Final Written Decision for “not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of claim 1: transmitting an indication of the first host responsive to the correlating.” Palo Alto Networks, 122 F.4th at 1384. In the opinion, the Federal Circuit explained that the Final Written Decision “never made a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step,” as proposed by Petitioner. Id. at 1385. The Federal Circuit stated that the Board “failed to explain why a person of ordinary skill in the art would not have been motivated to modify Paxton to provide the recited notification as taught by Sutton in response to the correlation disclosed in Paxton.” Id. The Federal Circuit concluded that “[b]y reading Paxton and Sutton in isolation, the Board erred,” and that we vacate and remand for the Board to clarify and explain its holding on whether a person of ordinary skill in the art would have been motivated to transmit the identity of the first host (e.g., to an administrator) as taught by Sutton, responsive to the correlating disclosed by Paxton to improve network security.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’903 patent “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent.” Pet. 13 (citing Ex. 1003 ¶¶ 18–20). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner’s proposed level of ordinary skill is similar, with Patent Owner contending that the ordinary skilled artisan “would be someone with a bachelor’s degree in computer science, electrical engineering, or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” PO Resp. 12–13 (citing Ex. 2019 ¶¶ 27– 31). Similar to Petitioner, Patent Owner also states that a person of ordinary skill in the art “may have additional industry experience in lieu of a formal degree.” Id. at 13.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After review of the current record, we conclude that no express claim construction is necessary for the purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“responsive to the correlation, we are not persuaded that one of ordinary skill in the art would have been motivated to combine the teachings of these references in the manner advocated by Petitioner. Petitioner contends that this combination would only involve “[t]he application of known techniques (e.g., Sutton’s implementation of rules and data to define security policies, disallowed websites, etc.) to improve similar devices (e.g., servers, gateways, firewalls, etc. in Sutton’s and Paxton’s systems) to provide predictable results in the same way (e.g., to provide packet-filtering functions preventing communications with potentially malicious hosts).” Id. at 22–23.” slip op. at 25
Patent outcomesUS 10,530,903 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,530,903 - AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision
The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26
Patent outcomesUS 10,841,958 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,841,958 - PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we institute review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent, and we adopt it here.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,952,153 - Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Jun 12, 2025 · IPR2024-00477 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–7 are unpatentable as anticipated by and obvious over Komata; the Board did not reach the Tsuji or Rosenberg grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a POSITA would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user. . . . Also, a person could have qualified as a [POSITA] with more formal education and less practical or industry experience, or vice versa. PO Resp. 17–18 (citing Ex. 2008 ¶ 17). Although these level of skill definitions are not the same, the differences are minor, and Patent Owner does not argue that its level of skill definition is dispositive. To the contrary, Patent Owner asserts that “[i]n any event, the challenged claims of the ’260 Patent are patentable under either . . . definition.” Id. at 18. We apply Petitioner’s level of skill but would have reached the same result had we applied Patent Owner’s.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“As we explained in our Institution Decision, we disagreed then, and still disagree, “that the second pressure must be detected after the first pressure is detected (or that the third pressure must be detected after the first pressure is detected) simply because the second pressure is greater than the first pressure (and the third pressure is greater than the second pressure).” Dec. 27. As we explained there, “[t]he claimed relative magnitudes of the first, second, and third pressures do not define any temporal relationships regarding the detection of the pressures.” Id. We agree with Petitioner that claim 1 recites quantitative relationships for the pressures, not temporal relationships. Reply 4. For example, claim 1 requires “the second pressure greater than the first pressure” but says nothing about when the second pressure must be greater than the first pressure. A key misconception undergirding Patent Owner’s argument is its statement that “a ‘first pressure’ must first exist before the invention can detect that the ‘second pressure’ is greater.” PO Resp. 27 (emphasis added). The claim does not require detecting that the second pressure is greater than the first pressure. Limitation [1c] simply says, “detect a second pressure on the first input device, the second pressure greater than the first pressure.” In other words, all the detection that this limitation requires is detecting a second pressure. The claim then observes that the second pressure is greater than the first pressure but does not require detecting this. Limitation [1e] similarly detects pressure but not the comparison: “detect a third pressure on the first input device, the third pressure greater than the second pressure.” Thus, it does not follow that “a ‘first pressure’ must first exist before the invention can detect that the ‘second pressure’ is greater.” See id. Accordingly, we determine that Patent Owner’s analysis of the claim language is unpersuasive.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Our decision here does not depend on the meaning of this term. Patent Owner only argues the phrase “tactile sensation” for Petitioner’s challenge over Rosenberg, which we do not reach because Petitioner’s challenge over Komata is dispositive. See PO Resp. 63–66. Accordingly, we do not construe this term.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“that Komata discloses all the limitations of claim 1. Patent Owner does not dispute that Komata discloses all the limitations of claim 1. Instead, Patent Owner disputes that Komata discloses the order of all the steps of claim 1, based on its construction requiring the steps to be performed in order. PO Resp. 50–54; Reply 17 (observing that Patent Owner “does not dispute that Ground 1 demonstrates how Komata anticipates or renders obvious claims 1–7 if [Patent Owner’s] ordered-steps argument is rejected”); Sur-reply 12–14 (not disputing the Reply’s observation). As Patent Owner’s argument relies on a claim construction we have not adopted, Patent Owner fails to undermine Petitioner’s persuasive showing.7 To the extent, as we note above, that the claims may require a partial ordering (i.e., limitation [1a] preceding limitation [1b] and limitation [1c] preceding limitation [1d], see supra Section I.A.1.a), Petitioner has persuasively shown that Komata discloses such ordering. a. Summary as to Claim 1 For the above reasons, Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by and would have been obvious over Komata. 3. Dependent Claims 2–7 Petitioner also contends that claims 2–7 would have been obvious over Komata. Pet. 28–35. Patent Owner does not dispute these dependent claims. Petitioner provides detailed explanations indicating where Komata teaches or suggests the limitations of claims 2–7, supported by Mr. Ward’s testimony. Id. We determine that Petitioner has shown by a preponderance of the evidence that claims 2–7 are anticipated by and would have been obvious over Komata.” slip op. at 17
Patent outcomesUS 7,336,260 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,336,260 - Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Jun 12, 2025 · IPR2024-00478 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–19 are unpatentable because Petitioner proved that Rosenberg I anticipates them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“feedback that simulates a mechanical detent.” PO Resp. 28; Sur-reply 3. Petitioner “does not explicitly disagree” that a virtual detent is “vibrotactile feedback that simulates a mechanical detent.” Reply 2. Petitioner asserts that “[i]f there is a dispute, it is whether Rosenberg I’s vibrotactile feedback ‘simulates a mechanical detent’ because [Patent Owner] says such simulation requires a sense of mechanical resistance and Rosenberg I allegedly lacks such simulated resistance.” Id. (citing PO Resp. 58–59).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“To the extent Patent Owner urges us to require virtual detents to vary on a system or application basis, we do not find this interpretation required by the claims or specification either. Although the claims refer to “a plurality of systems,” they do not recite different detent profiles for each of those systems. Claim 1, for example, recites “receiving a detent profile associated with one of the systems.” The other claims are similar. Patent Owner’s reliance on non-limiting specification language is also unavailing. E.g., Ex. 1001, 8:38–46 (“can” and “may”), 4:30–44 (“embodiment” and “may”).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“supports its proposed construction. See PO Resp. 32. Patent Owner argues that claim 15 recites a “system comprising” “an input device configured to control one of a plurality of systems,” and hence “the recited plurality of systems are subsystems in addition to the containing system.” Id. We question how this point supports Patent Owner’s proposal because this does not address why each system must “provide[] context for virtual detents.” But regardless, we find it unpersuasive because claim 15’s preamble is not limiting (merely reciting “A system comprising”). See Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015) (“[P]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.”); see also Tr. 80:4– 8 (Patent Owner conceding that the preamble is non-limiting). Nor is there any explicit language in claim 15 that would exclude any particular system, such as the system recited in the preamble, from the recited “plurality of systems.”” slip op. at 9
Patent outcomesUS 9,430,042 unpatentableClaim construction§ 102 anticipationPatents in suitUS 9,430,042 - Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentablePTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision
Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25
Patent outcomesUS 8,356,251 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,356,251
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.