- Ericsson Inc. / Nokia Of America Corporation v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00725 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–6 and 11–16 under § 314(a), finding the Fintiv factors favored denial and the challenges were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’000 patent claims a filing date before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. 2 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). 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 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“implemented by a base station. As Petitioner points out, Classon describes a multicarrier communications system that includes a “base site” and “receiving platforms” (also referred to as “transmission targets”), which we find are a base station and mobile stations. Pet. 19–20 (citing Ex. 1005, code (57), ¶¶ 23, 27, 28, 31, Fig. 4). The parties dispute whether Classon (in light of the background knowledge of a skilled artisan or, in light of TR 25.858) teaches transmitting control information indicating whether a mobile station is to transmit one channel quality indicator (CQI) for each subcarrier block within a communication frequency band or one CQI for all subcarrier blocks within the communication frequency band instead of multiple CQIs for multiple subcarrier blocks within the communication frequency band, as recited in claim 1 (and similarly recited in claim 11). For the reasons given below, the case Petitioner advances is less than compelling.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner’s argument has merit. Paragraphs 37–40 of Classon describe the base station determining what mode to use for communication based on the information (including CQI information) sent by the mobile units. Paragraph 41 states that “such channel quality information will preferably already be available to the base site” but that, if it is not available, “the base site can transmit 73 a message to the relevant transmission target or targets and request a reply that includes the relevant channel quality information.” Also, paragraph 41 states that “[w]ays in which such information can be provided to the base site will be described below in more detail.” This appears to be a reference to Classon’s description of the mobile stations, not the base station, determining that they are of “type 1” or “type 2” and sending channel quality information to the base station based on that determination, after which the base station determines whether to use the first mode or second mode in communications. Ex. 1005 ¶¶ 45–51. Thus, rather than supporting Petitioner’s position, the context around paragraph 41 appears in friction with that position. Petitioner does not explain how the base station determines a transmission mode (and thus a requested amount of CQI information) without first having that information from the mobile stations. Instead, it is reasonable to read paragraph 41 as requesting of the mobile stations information that the mobile stations deem appropriate; in other words, that the mobile stations determine whether to send a CQI value for each subcarrier or information on average channel quality. Even if it is sufficient to go forward on a theory that Classon implicitly teaches the claimed control message, the evidence Petitioner advances for this position is not compelling.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Petitioner argues that we should not deny the Petition under 35 U.S.C. § 325(d). Pet. 56. Patent Owner argues that we should. Prelim. Resp. 23– 28. Because we deny the Petition for other reasons, we do not reach whether we should exercise our discretion to deny the Petition under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,137,000 - PTAB · Oct 7, 2022 · IPR2022-00793 · APJ Debra K Stephens · IPR · Institution
Instituted IPR on claims 1–5, 8, 11, 12, 14, 15, 27, and 28 for both § 103 grounds based on Muthukumarasamy alone and with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. 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. (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Preliminary Determination Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a “person of skill in the art (‘POSA’) would have had at least a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (Pet. 12 (citing Ex. 1005 ¶¶ 45–49)). Petitioner further asserts “[w]ith more education, for example, postgraduate degrees and/or study, less more experience can substitute for formal education” (id.). Patent Owner does not dispute Petitioner’s assertion (see Prelim. Resp. 24). Based on the present record including the disclosure in the ʼ528 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 12) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that we “need not construe any claims” to resolve this controversy and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action” (Pet. 12–13 (citing Ex. 1005 ¶ 50; Ex. 1014)). Patent Owner does not assert any particular claim construction at this stage in the proceeding (Prelim. Resp. 24). On this record, we determine that no terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,782,528 - PTAB · Oct 7, 2022 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR on claims 1, 2, and 6–8 for both asserted obviousness grounds: Muthukumarasamy alone and Muthukumarasamy with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. 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. Interim Procedure 9. Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. Paper 7 at 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, on the record before us, we are persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in showing that at least one claim of the ʼ289 Patent is unpatentable. IV. ORDER For the reasons given, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes is instituted on all the challenged claims with respect to all grounds set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ’289 Patent is instituted commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is given of the institution of a trial.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertion. See Prelim. Resp. 21. Based on the present record including the disclosure in the ʼ289 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 14) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of 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 asserts that we “need not construe any claims to resolve [this] controversy” and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action.” Pet. 14–15 (citing Ex. 1014). Patent Owner does not assert any particular claim construction at this stage in the proceeding. Prelim. Resp. 21. On this record, we determine that no terms or phrases in the claims require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,904,289 - PTAB · Sep 30, 2022 · IPR2022-00795 · APJ Debra K Stephens · IPR · Institution
The Board instituted inter partes review on claims 1, 2, and 5–9 under both §103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) 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 (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the present record including the disclosure in the ʼ251 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 13) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d art)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record, we determine that no terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“particular media player for playing the video content,” as recited in claim 1 (Pet. 34–41). On the record before us, we determine Petitioner supports that combination with adequate rationale, including that the combination “facilitate[s] the source-agnostic presentation of internet content” and “facilitate[s] presentation of internet content at the display device using any number of media players through embedded media player pages” (id. at 40 (citing Ex. 1005 ¶ 102); see id. 15–18). Accordingly, based on the record before us, Petitioner has shown sufficiently that the combination of Muthukumarasamy and Hayward teaches or suggests “receiving, in the server system, one or more signals from the personal computing device, the one or more signals . . . identifying a particular media player for playing the video content,” as recited in claim 1.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,356,251 - PTAB · Sep 28, 2022 · IPR2022-00602 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1, 4, 6, 10–12, and 14–17 on the asserted § 103 ground over Mathiassen, McKeeth, and Anderson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also provides argument and probative evidence as to why a person of ordinary skill would have combined the disclosures of the references, with a reasonable expectation that the combination would be successful. Pet. 36–37.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“alone, or combined with one or more of Ikegami, Pu, Steinar, and/or Anderson, in various combinations or permutations, may be relied on in the HMD litigation to show that the Duration Limitation was known or would have been obvious. Thus, there is no persuasive evidence to establish whether the “same prior art combination,” in this IPR proceeding, that is Mathiassen, McKeeth, and Anderson, will be asserted in the HMD litigation against the Duration Limitation in the ’705 patent. See Pet. 31 (discussing the Duration Limitation and asserting “Mathiassen (as modified by McKeeth) and further modified by Anderson teaches Claim 1(d1)”). Patent Owner’s argument to the contrary is based on speculation, not evidence. We agree with Petitioner that “it is entirely unclear what art actually will be presented at the HMD trial,” and that Patent Owner “asks the Board to speculate on what invalidity position HMD will present at trial (if it ever proceeds to trial).” Prelim. Reply 4. Thus, on this basis alone, the fact that there are different parties and no persuasive evidence of overlapping references, we would decline look to the HMD W.D. Texas case in determining to exercise our discretion under Section 314(a) deny institution.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Dr. Sears’ Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,665,705 - PTAB · Sep 28, 2022 · IPR2022-00601 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1, 3–7, 9–11, and 13 based on the asserted obviousness ground over Mathiassen, McKeeth, and Anderson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner also proposes constructions for the claim terms “database,” “conditional access,” “biometric signal,” and “accessibility attribute.” Pet. 9. Petitioner asserts the proposed constructions are either agreed to by the parties (see Ex. 1079) or made by the district court (see Ex. 1077). Patent Owner does not address claim constructions in its Preliminary Response or Preliminary Sur-reply. Based on the record before us, we adopt, for purposes of this Decision, Petitioner’s unopposed proposed claim constructions. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“In accordance with these requirements, Petitioner provides specific constructions for all the means-plus-function clauses in the challenged claims. Pet. 6–8. Petitioner asserts its proposed constructions are consistent with constructions made by the district court in the related litigation between the parties (see Ex. 1077), constructions agreed to by the parties in the related litigation (see Ex. 1079), or constructions proposed by Patent Owner in the related litigation (see Ex. 1073). 7 Petitioner also proposes constructions for the claim terms “database,” “conditional access,” “biometric signal,” and “accessibility attribute.” Pet. 9. Petitioner asserts the proposed constructions are either agreed to by the parties (see Ex. 1079) or made by the district court (see Ex. 1077). Patent Owner does not address claim constructions in its Preliminary Response or Preliminary Sur-reply. Based on the record before us, we adopt, for purposes of this Decision, Petitioner’s unopposed proposed claim constructions. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides a clause-by-clause analysis of independent claim 1, identifying where in each of the cited references, Mathiassen, McKeeth, or Anderson, the claimed element is disclosed, and why it would have been obvious to a person of ordinary skill to combine the various disclosed elements with a reasonable expectation of success. See Petition 50–56. Throughout its analysis, Petitioner cites the Declaration testimony (Ex. 1003) of Dr. Sears for evidentiary support.9 Petitioner also provides a “Claims Listing Appendix” where Petitioner” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - PTAB · Aug 25, 2022 · IPR2022-00446 · APJ Amber L Hagy · IPR · Institution
Instituted IPR on claims 1, 3, and 5 for all asserted grounds because Petitioner showed a reasonable likelihood of prevailing, including a compelling challenge based on Goldston.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’909 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“month from the institution deadline.” Prelim. Resp. 4. Patent Owner also provides arguments regarding the factors as set out in Fintiv. Id. at 4–14. We have considered the circumstances and facts before us in view of the Fintiv factors and the Memorandum, and determine that the information presented in the Petition presents a compelling unpatentability challenge. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity ground based on Goldston, if unrebutted at trial, would plainly lead to a conclusion that claims 1, 3, and 5 are unpatentable by a preponderance of the evidence. See supra Section II.D.1. Instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum, 5; see also Fintiv, Paper 11 at 14–15 (noting that when the merits of a ground raised in the petition seem particularly strong on the preliminary record, “the institution of a trial may serve the interest of overall system efficiency and integrity because it allows the proceeding to continue in the event that the parallel proceedings settles or” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s persuasive showing because it overlooks the entirety of Petitioner’s contentions. Petitioner does not contend that certain subcarriers are assigned to a data channel merely because they “could” carry data. Rather, Petitioner builds its contentions by first providing evidence that Goldston’s “first group” of subcarriers are “data carriers” that transmit, e.g., “digital audio data.” Pet. 31–32. Petitioner then presents arguments and evidence that the ordinarily skilled artisan would have understood from Goldston that, although all of the carriers in the “first group” could be used to transmit digital audio data, certain carriers are assigned specifically to transmit control information, meaning that the remaining carriers would transmit non-control information (e.g., data). Id. at 29–33. In particular, Petitioner presents evidence that, whereas Goldston explicitly states that the innermost pair of carriers is used “to transmit control information,” the “word ‘control’ is omitted from the disclosure of what would be transmitted” on the remaining carriers. Id. at 31–32. Petitioner builds on this analysis by pointing to evidence that the encoding rates disclosed by Goldston for the carriers outside of the innermost pair “would have been well-known digital audio data encoding rates.” Id. at 32 (citing Ex. 1004, 4:19–28). Petitioner also presents evidence of the differing power levels of the innermost pair relative to the surrounding subcarriers, noting that Goldston’s innermost carrier pair in particular is set up specifically to transmit control information because it is set up to transmit at a higher power than the other carriers, and is closest to the center of the channel. See id. at 35–36. As Goldston discloses, “the carriers that are closest to the center of the channel arc least sensitive to errors in the symbol timing, or baud recovery, circuits. These factors combine to make the control information very robust.” Ex. 1004, 8:8–10 (emphasis added). Relying on all of the foregoing evidence, as well as the testimony of Dr. Fuja, Petitioner then argues that the ordinarily skilled artisan “would have understood that Goldston’s plurality of subcarriers ranging ‘from (f0 - 11f1) to (f0 - 2f1) and from (f0 + 2f1) to (f0 + 11f1)’ are assigned to a data channel.” Id. at 33 (emphasis added). In short, we do not view that Petitioner’s contentions and arguments are based on the mere possibility that the subcarriers outside the innermost pair “could be” assigned to a data channel; rather, Petitioner contends that the ordinarily skilled artisan would have understood that they are, in fact, assigned to a data channel. Petitioner’s arguments and evidence are, on this record, persuasive. Patent Owner has not presented arguments or evidence that undermine Petitioner’s persuasive showing. Based on the current record, for the purposes of this Decision, we are persuaded Petitioner has demonstrated sufficiently that Goldston discloses “an assigning section operable to assign a data channel to the first plurality of subcarriers of the multicarrier signal and to assign a control channel to the second plurality of subcarriers of the multicarrier signal,” as recited in claim 1.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“the alternative, “[t]o the extent that the Patent Owner contends (and the Board agrees) that the plain and ordinary meaning of ‘base station apparatus’ requires a component in a cellular mobile communications network.” Id. at 51. In particular, Petitioner presents arguments and evidence that Takahashi teaches “a base station that is a component in a cellular mobile communications network” (id. at 52) and that “[i]mplementing Goldston’s techniques (identified above in Ground 1) for assigning control and data channels in an OFDM multicarrier signal to the ‘highspeed downlink base station’ B2 or B4 in Takahashi would yield ‘a base station apparatus equipped with said radio transmitting apparatus according to claim 1.’” Id. at 55. Relying in part on the testimony of Dr. Fuja, Petitioner asserts that the ordinarily skilled artisan “would have been motivated to combine the relevant disclosure in Goldston and Takahashi because, prior to the ’909 patent’s earliest alleged priority date, there were design incentives and market forces prompting the application of Goldston’s techniques for assigning control and data channels in an OFDM multicarrier signal to the ‘high-speed downlink base station’ B2 or B4 in Takahashi.” Id. (citing Ex. 1003 ¶ 130). Patent Owner does not, on this record, specifically address Petitioner’s showing as to the combined teachings of Goldston and Takahashi. Rather, at this stage, Patent Owner’s arguments against Petitioner’s showing are limited to those we have addressed above in connection with Ground 1. In particular, Patent Owner contends that “Petitioners do not rely on Takahashi for the assignment of ‘data’ and ‘control’ channels limitations recited in claim 1. . . . Accordingly, Ground 2 fails to render obvious dependent claim 3 for at least the same reasons set forth above for claim 1.” Prelim. Resp. 34. Based on the current record, we determine that Petitioner has established a reasonable likelihood of prevailing in showing that claim 3 is unpatentable over the combination of Goldston and Takahashi.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,372,909 - F5, Inc. v. Sunstone Information Defense, Inc.Institution deniedPTAB · Aug 9, 2022 · IPR2022-00484 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6, 8, 12, 16, 21–25, 27, 28, 32, and 36 unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’682 patent on any asserted ground of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“of the alleged invention “will have had either a master’s degree in computer science with at least two-years’ experience developing technology for detecting malware affecting internet browsers or a bachelor’s degree with four years of said experience.” Pet. 12 (citing Ex. 1006 ¶ 42). Patent Owner has not proposed a differently stated level of ordinary skill in the art. See generally Prelim. Resp. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. Petitioner’s assertion is supported by the testimony of Dr. Jakobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“First, Petitioner splits limitation [1.d] into two parts, and applies Chen’s teachings to meet the first part, i.e., subsections (i) and (ii) of limitation [1.d] (Pet. 23–28), and Ozzie’s teachings to meet the second part, i.e., subsection (iii) of limitation [1.d] (Pet. 28). There is no explanation by Petitioner of how the combination of Ozzie and Chen results in satisfaction of all three subsections (i), (ii), and (iii) of limitation [1.d] at the same time in a single embodiment. On the record presented by Petitioner, at most only subsections (i) and (ii) of limitation [1.d] are met, or subsection (iii) is met, but not all three subsections (i), (ii), and (iii) at once as is required by claim 1. One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,958,682 - F5, Inc. v. Sunstone Information Defense, Inc.Institution deniedPTAB · Jul 28, 2022 · IPR2022-00482 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 and 37–39 were unpatentable over any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’870 patent on any asserted ground of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not proposed a differently stated level of ordinary skill in the art. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. 3 Patent Owner submits the Declaration of Nenad Medvidović, Ph.D. in support of its Preliminary Response. Ex. 2001. 4 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Based on the record before us, the ’870 patent has an effective filing date prior to the effective date of the applicable AIA amendments (March 16, 2013). Therefore, we apply the pre-AIA version of 35 U.S.C. § 103. Petitioner’s assertion is supported by the testimony of Dr. Jacobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision. C.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper. Second, Petitioner identifies Chen’s user actions as the claimed response message. Pet. 21. But Chen’s “user actions” are canonical, i.e., theoretical possibility, and used only for formal reasoning analysis, as discussed above in Section II.C.3. They have not been shown by Petitioner to be actual responses in a real communication between a server and a user. Chen’s user action or user actions do not constitute a response message. Further, Petitioner has not shown how Chen’s canonical user action corresponds in kind to any actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a real response message from Chen’s canonical user actions reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art. Third, Petitioner identifies Chen’s program invariant as the claimed prediction of a response message. Pet. 21. But Chen’s “program invariant,” as discussed above in Section II.C.3, is not any expected or anticipated information that is returned to any server from a client. It is not the prediction of any response message. Further, Petitioner has not shown how Chen’s program invariant corresponds in kind to any prediction of an actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a prediction of a response message from Chen’s program invariant reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,122,870 - BMW Of North America, LLC v. Omega Patents, LLCAll claims unpatentablePTAB · May 9, 2022 · IPR2021-00181 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–31 are unpatentable: claims 1–31 as shown over the Hassan-based grounds; the Dage-based grounds do not show claims 1–31 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’814 patent would have either (1) “a Bachelor of Science degree in Electrical Engineering, Mechanical Engineering, or Automotive Engineering, or an equivalent field, with at least two years of academic or industry experience in the automotive industry”; or (2) “a Master of Science degree in Electrical Engineering, Mechanical Engineering, or Automotive Engineering, or an equivalent field, with at least a year of academic or industry experience in the same field.” Pet. 20–21 (citing Ex. 1003 ¶¶ 35– 38). Petitioner indicates that “[w]ith more education, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” Id. at 21. Patent Owner indicates that, for the purpose of this proceeding, Petitioner’s asserted level of skill is sufficient to evaluate the Petition’s grounds. PO Resp. 12. art because it is consistent with the problems addressed in the ’814 patent and the prior art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“ordinary skill in the art would not have turned to Birzl to “increase user satisfaction or to improve safety.” PO Resp. 19. We credit the testimony of Petitioner’s expert, Dr. Azim Eskandarian, who explains that Hassan uses an engine start signal that triggers functionality, such as the activation of the climate control system. Ex. 1003 ¶ 85; Pet. 23. Dr. Eskandarian further explains that “vehicle brakes were fundamental, well-known components of all motorized vehicles” and in Birzl, the “engine start signal triggers the generation of a signal to activate the parking brake.” Ex. 1003 ¶ 85; Pet. 23. Dr. Eskandarian also identifies that a person with ordinary skill in the art would have combined Hassan and Birzl to include the well-known safety benefits of brake actuation to a remote start system. Ex. 1003 ¶ 85; Pet. 23. Similarly, we are not persuaded by Patent Owner’s argument that Dr. Eskandarian’s lack of knowledge of studies or industry data substantiating that rolling away is a natural problem detracts from his credible testimony of the well-known safety benefits of actuating a parking brake in response to a remote engine start signal. PO Resp. 20–21 (citing Ex. 2013, 124:11–126:4; Ex. 2014 ¶ 69). Dr. Eskandarian also explains that the combination of Hassan and Birzl would have increased the convenience of the combined system by allowing a user to use the “remote” functionality of Hassan. Ex. 1003 ¶ 87; Pet. 24.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundUnpatentable
“from Birzl because “Birzl discloses operation of a vehicle brake for securely blocking a vehicle or for securing the vehicle against rolling away before a local starting operation,” whereas “Baier-Welt discloses the application of a parking brake-based system on roadway conditions.” PO Resp. 33. A reference teaches away from the claimed invention if it criticizes, discredits, or would have discouraged a person of ordinary skill in the art from “following the path set out in the reference,” or if a person of ordinary skill “would [have been] led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner has not set forth persuasive evidence that Baier-Welt criticizes, discredits, or would have discouraged a person with ordinary skill in the art from combining the multiple brakes disclosed by Baier-Welt with the braking system of Birzl. As discussed above, we are persuaded by Petitioner that a person with systems in order to increase user safety.” slip op. at 39
Patent outcomesUS 9,458,814 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,458,814
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.