- Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Patent outcomesUS 7,594,052 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,594,052 - PTAB · Jan 15, 2025 · IPR2024-00913 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner filed both of its petitions in the instant proceedings on the same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). On this record, we are unpersuaded by Patent Owner’s argument that Blease teaches away from using aggregated ports to form a high-capacity link because “Blease’s disclosure is clear that the focus of its multicast techniques is to reduce, not increase, the amount of multicast traffic flowing through network.” Prelim. Resp. 14. The discussion in Blease of minimizing the bandwidth does not relate to restricting the bandwidth required for a particular stream as Patent Owner seems to assert, but rather to eliminating duplicate transmissions of the same multicast stream to be delivered to multiple subscribers. See Ex. 1005, 2:39–42, 4:50–56 (“The multicast transmission techniques described herein may significantly reduce the amount of multicast traffic . . . . For example, regardless of the number of subscriber devices[] connected to the same network switch that request the same multicast stream, [the] network device[] only sends one copy of the multicast stream to the network switch.”). Therefore, aggregating ports to accommodate transmission of a single multicast stream that requires more bandwidth is a different concept that is unrelated to the discussion in Blease about minimizing bandwidth by increasing efficiency.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Jan 15, 2025 · IPR2024-00989 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim in each Petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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). 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).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - PTAB · Aug 6, 2024 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kovvali and Kalman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“on May 8, 2024 (see 35 U.S.C. § 314(b)(1)), and none of the relevant deadlines for fact discovery or expert discovery, or the date of the scheduled Markman hearing, will have passed by that date. As described by Petitioner, fact and expert discovery do not close until next year, the parties have not yet exchanged preliminary claim constructions, and the Markman hearing is not scheduled until December 4, 2024, approximately four months after our deadline for this decision. See Pet. 83. We also find that Petitioner’s diligence in filing the Petition only about a month after receiving Patent Owner’s infringement contentions, and only four months after the filing of the original complaint, supports this factor weighing more strongly against exercising our discretion to deny the Petition. See id. at 82. Accordingly, in view of the parties’ respective arguments, we find that factor 3 weighs strongly against discretionary denial. 4. Overlapping Issues with the Parallel Proceeding Under this factor, Petitioner stipulates that “[i]f the Board institutes trial, Petitioner will cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims, to the extent Petitioner even asserts the same combination in the district court.” Pet. 83. We find that this stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns for potentially conflicting decisions.” Sand at 12. More specifically, if we institute, then by stipulation the court in the Cisco litigation will not have to determine whether the challenged claims of the ’279 patent would have been obvious in view of Kovvali, Kalman, Masters, and RFC 2892, and therefore the risk of inconsistent results is also reduced. against discretionary denial because the stipulation is limited in nature.10 Prelim. Resp. 20. We agree, and therefore find this factor weighs slightly against discretionary denial. Sand at 12 n.5 (“Petitioner stipulates only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition in this case. . . . Petitioner could have stipulated that it would not pursue any grounds raised or that could have reasonable been raised in an IPR . . . . Doing so might have tipped this factor more conclusively in its favor.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision below, Petitioner relies on Kovvali alone as teaching all but two steps recited in independent claim 1, and Petitioner similarly relies on Kovvali alone as teaching all but two limitations of independent claim 15. See Pet. 26–50, 63–64. For those additional steps and limitations, Petitioner relies on combined teachings of Kovvali and Kalman. See id. at 42–47. As Petitioner points out and Patent Owner acknowledges, however, Kovvali was not previously presented to the Office during prosecution of the application for the ’279 patent. See id. at 80; Prelim. Resp. 26. Moreover, notwithstanding Patent Owner’s assertion that Drake has “similar[ities] to how Petitioner characterizes Kovvali,” Patent Owner identifies only that “Drake teaches a ‘management system for local area networks’ that features an ‘allocator,’ which determined ‘if requested facilities are available, and if so, reserves these facilities for the requesting station.’” Prelim. Resp. 26 (citing Ex. 2003, code (57)). In contrast, Petitioner’s reliance on Kovvali goes significantly beyond such high-level generalizations, providing a detailed mapping of Kovvali’s teachings to, for limitations [15.1]–[15.5] and [15.8] of independent claim 15, as well as to the additional limitations recited in each of dependent claims 2, 5, 11–14, and 18, with supporting testimony from Dr. Mir’s declaration. Pet. 27–42, 48–51, 55–56, 59–64, 67 (citing Ex. 1003 ¶¶ 62–103, 120–130, 146–150, 160–185). Notably, Patent Owner does not expressly contest Petitioner’s arguments with respect to those limitations at this stage of the proceeding. See generally Prelim. Resp. Nor does Patent Owner cite any evidence of arguments substantially the same as those presented by Petitioner having been presented during prosecution. Accordingly, on this record and after taking into account Becton, Dickinson factors (a), (b), and (d), cited by Advanced Bionics as relevant to the first part of the two-part framework set forth therein (see Advanced Bionics at 9–10), we are not persuaded that the same or substantially the same art previously was presented to the Office or that the same or substantially the same arguments previously were presented to the Office. Accordingly, we need not proceed to the second part of the framework, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of the Preliminary Response. Prelim. Resp. 3. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,035,279 - PTAB · Jun 21, 2024 · IPR2024-00343 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of claims 1–7 of the ’052 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board has set forth a two-part framework for this determination under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“B. Analysis The Interim Procedure instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In this proceeding, Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. In the Qualcomm litigation, however, Patent Owner described a person of ordinary skill in the art as having: a Bachelor of Science (or equivalent) degree in electrical engineering, computer engineering, or a related field, and 2–3 years of work experience in very large-scale integrated (“VLSI”) systems, such as application-specific integrated circuits (“ASICs”), application-specific standard parts (“ASSPs”), system-on-chip (“SoC”), or field programmable gate arrays (“FPGAs”), and has an understanding of on-chip interconnection networks. Ex. 1017, 11. In this proceeding, Petitioner’s definition is uncontested and appears consistent with the level of skill reflected in the specification of the ’052 patent (“Specification”) and in the asserted prior-art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition. We note, however, that we would reach the same conclusions in this Decision if we were to adopt the definition that Patent Owner set forth in the Qualcomm litigation. To the extent the parties dispute the definition of an ordinarily skilled artisan during” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,594,052 - PTAB · Feb 7, 2024 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–9, 14–18, 20, 22, 32, and 34–36, finding a reasonable likelihood that claim 1 is obvious over Ueda, the SIP Standard, and the SDP Standard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“13. Conclusion as to Claim 1 For the above reasons, we determine that Peloton has shown, sufficiently persuasively at this stage, that Ueda in combination with the SIP and SDP Standards teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features of each reference as Peloton argues in the Petition. We therefore determine that Peloton is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Ueda in view of the SIP Standard and the SDP Standard.” slip op. at 45
- Skill levelSkill level board ownOther
“had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “equipment specification information” First, Peloton contends that we should interpret the term equipment specification information to mean “an identifier for identifying the user equipment” because in several figures of the ’427 patent, SIP messages include SIP URIs (Uniform Resource Identifiers) associated with the user requesting the content. See Pet. 9 (emphasis omitted). NEC disagrees with Peloton’s proposed construction and argues that “this term should be given its plain and ordinary meaning.” Prelim. Resp. 12. NEC contends that no particular construction is necessary because the term is not relevant to the contested issues in the Petition. See id. Based on the preliminary evidence, we agree with NEC that the term has its ordinary and customary meaning, but we need not construe the term explicitly at this stage. 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 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · May 4, 2023 · IPR2022-01567 · APJ Charles J Boudreau · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on the obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“first General Plastic factor weighs against exercising our discretion to deny institution. In General Plastic, the petitioner filed a set of five follow-on petitions after its own earlier petitions for inter partes review of the same two patents were denied on the merits. Gen. Plastic, Paper 19 at 2–3. Petitioner here, as Patent Owner admits, has not previously filed any petition directed to the ’450 patent. Moreover, although General Plastic has not been limited to instances where multiple petitions are filed by the same petitioner (see, e.g., Valve, Paper 11 at 9 (stating that “when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors”)), we find no evidence of record in the present case that Petitioner shares any relationship with Dell. Unlike in Valve, in which the Board found a “substantial relationship” to exist between different petitioners where the earlier and later petitioners not only were co-defendants in district court litigation but the earlier petitioner’s accused products in the litigation incorporated technology licensed from the later petitioner, we find no evidence in the record before us of any similar relationship between Petitioner and Dell. We are not persuaded that Petitioner’s and Dell’s both being defendants in district court litigation involving the ’450 patent rises to the type of “significant relationship” described in Valve. Cf. Valve, Paper 11 at 10. This case also differs from Ericsson, where the Board found that a petitioner had “implicitly created” a relationship with earlier petitioners “by using the prior petitioners’ work as a menu and picking and choosing from their work product.” Ericsson, Paper 8 at 12. Notwithstanding Patent Owner’s citation of Ericsson (Prelim. Resp. 49), Petitioner here does not rely on prior art “pick[ed] and cho[sen]” from any earlier petitions. b. Whether, at the time of filing of the first petition, the petitioner knew of the prior art asserted in the second petition or should have known of it Patent Owner does not contend that Petitioner knew or should have known of the prior art asserted in the Petition at the time Dell filed the petition in IPR2021-01486. Indeed, it appears from the record that the ’450 patent had not yet been asserted against Petitioner as of the time Dell filed its petition in September 2021. See Paper 5, 3; Pet. 3 (identifying March 29, 2022, as filing date of first district court proceeding against Petitioner involving the ’450 patent). Unlike in Ericsson, where the petitioner picked and chose from among references previously cited in earlier petitions challenging claims of the same patent, the prior art asserted here by Petitioner was not cited in any prior petition for review of the ’450 patent. See Ericsson, Paper 8 at 12–13. And again, we find no evidence in the record of any significant relationship between Petitioner and Dell. Thus, whether Petitioner knew of, or should have known of, the prior art relied upon in this Petition at the time Dell filed its petition is of no import under this factor. For this reason, we determine that the second General Plastic factor does not weigh in favor of exercising our discretion to deny institution.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “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). Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute inter partes review of claims 1–18 of the ’450 patent on all asserted grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Ex. 1003 ¶ 52; see also Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not provide its own assessment regarding the level of skill in the art, or otherwise dispute Dr. Wilson’s testimony. See generally Prelim. Resp.; see also Ex. 2001 ¶¶ 21–23 (Mr. Alberth acknowledging Dr. Wilson’s assessment and testifying that he “accept[s] Dr. Wilson’s proposed qualifications of a POSITA” for purposes of his Declaration). Based on our review of the record at this stage, we find Dr. Wilson’s assessment to be is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). Nonetheless, we further find that the qualifier “at least” before the number of years of academic or industry experience introduces unnecessary ambiguity into the assessment as it lacks any upper bound. Accordingly, we adopt Dr. Wilson’s assessment, minus the qualifier “at least,” for purposes of determining whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the parties’ arguments, we agree with Petitioner that no terms or phrases in the claims require express construction at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). First, regardless of whether we adopt Patent Owner’s construction of “time-frequency coordinate” as “one dimensional time-frequency coordinate,” we find, as discussed in more detail below, that at least Vijayan089 teaches such a one-dimensional time-frequency coordinate. See, e.g., infra § III.E.3.c. Second, we also conclude that we need not expressly construe the term “time-frequency resource unit.” See Prelim. Resp. 6. Notwithstanding Patent Owner’s contention that Petitioner’s district court co-defendants proposed a construction for that term in co-pending litigation, Patent Owner itself points out that “Petitioner has made no attempt to apply Defendants’ proposed litigation construction . . . for any of its grounds” in this proceeding. Id. at 6–7 (citing Pet. 44–48, 74– 80). Accordingly, we preliminarily find that the parties appear to agree that plain and ordinary meaning of “time-frequency resource unit” should apply in this proceeding. Nonetheless, we identify below a potential dispute with regard to the construction of the claim limitation “each unit containing a set of frequency subcarriers in a group of OFDM symbols” that is underdeveloped on the present record. See infra §§ III.E.3.c, III.F.3.c. The parties are advised to address the construction of that limitation in their briefing in the course of trial. D. Discretionary Denial Under 35 U.S.C. § 314(a)” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,447,450
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.