- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Mullen Industries LLCInstitutedPTAB · Mar 31, 2025 · IPR2024-01472 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–39, finding a reasonable likelihood that the challenged claims are unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Petitioner that much work remains in the district court case as it relates to invalidity because discovery is in its early stages and a Markman hearing has not yet occurred. We also agree with Petitioner, that Petitioner’s diligence in filing its Petition (a) less than five months after receiving Patent Owner’s infringement contentions and (b) prior to the parties briefing claim construction issues weighs against exercising discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see 37 C.F.R. § 42.4. Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of claims 1–39 of the ’633 patent. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1002 ¶¶ 25–29). Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. For purposes of this Decision, we apply Petitioner’s statement as our definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“to resolve the issues in the Petition. Pet. 8. In contrast, Patent Owner contends that the claim term “said first event and said second event,” and the claim term “said device includes motion sensing operable to distinguish between a plurality of different types of motion” require express construction. Prelim. Resp. 5–14. We do not need to resolve this dispute, because even under Patent Owner’s narrower constructions, Petitioner has shown a reasonable likelihood of success that at least one claim is unpatentable, as discussed below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,190,633 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 10, 11, 25, 27, and 30 are unpatentable under § 103 over Grotmol, Grotmol and Hickman, or Grotmol and Hoffman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 5; PO Resp. 9. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D–II.F.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner’s arguments are unavailing. Grotmol teaches that a user may train a robot to learn “simple” and “complex” tasks. Ex. 1005, 24:17– 23. The evidence of record indicates that a person of ordinary skill in the art would have known to use different trainers “to train behaviors involving different levels of complexity in order to take advantage of the varying skills and knowledge of trainers.” Ex. 1003 ¶ 341. Thus, based on Grotmol’s teaching that a robot can learn both simple and complex tasks, a person of ordinary skill in the art would have had a specific reason for different users to train Grotmol’s robot for different behaviors, namely, to benefit from the users’ varying skills and knowledge. Pet. 25; Ex. 1003 ¶ 341; Ex. 1005, 24:17–23. Grotmol also teaches that a user may train a robot “using a gamepad (or other input device . . . ).” Ex. 1005, 26:9–13; see id. at 33:18–21. The evidence of record indicates that “switching users would be as simple as handing off a gamepad or other remote device used for controlling the robot from one user to another.” Ex. 1010 ¶ 73. Neither Patent Owner nor its declarant, Dr. Eli Saber, explains specifically why handing Grotmol’s gamepad to a different user would have created “complexities of combining the mixed knowledge into a single knowledgebase” or required “identifying each user to store particular learned operations and preferences in portions of the knowledgebase for user-specific autonomous operations.” See PO Resp. 14–15; PO Sur-reply 9; Ex. 2007 ¶¶ 128–130. Thus, based on Grotmol’s teaching of using a gamepad to train a robot, it would have been simple and straightforward for different users to train Grotmol’s robot for different behaviors. Ex. 1005, 26:9–13, 33:18–21; Ex. 1010 ¶ 73.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“4. Reason to Combine Petitioner asserts that a person of ordinary skill in the art would have had reason to combine the cited teachings of Grotmol and Hickman. Pet. 27–30 (citing Ex. 1003 ¶¶ 159–166). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine Grotmol and Hickman so that Grotmol’s robots share training sets using Hickman’s shared robot knowledgebase. Id. at 30; Ex. 1003 ¶ 166. Doing so would have been obvious because Grotmol teaches sharing training sets between robots, and Hickman’s shared robot knowledgebase would facilitate wider and faster sharing of Grotmol’s training sets. Pet. 27–29; Ex. 1003 ¶¶ 160–161, 164; Ex. 1005, 33:27–32; Ex. 1007, 1:38–41, 5:41–46, 11:31–41. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Hickman’s shared robot knowledgebase with Grotmol’s robot because Hickman’s shared robot knowledgebase would “not interfere” with Grotmol’s robot. Pet. 30; Ex. 1003 ¶ 166.” slip op. at 24
Patent outcomesUS 11,055,583 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10
Patent outcomesUS 11,055,583 mixedClaim construction§ 102 anticipationPatents in suitUS 11,055,583 - PTAB · Nov 22, 2024 · IPR2024-00814 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–20 for all petitioned challenges, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1, 2 and 4– 20 of the ’244 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’244 patent.2” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA” or “POSA”) at the time of the invention of the ’244 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four years’ experience in cloud services for settings customization” and that “[a]dditional education (e.g., Master’s degree in electrical engineering, computer science, or equivalent) could substitute for professional experience and vice-versa.” Pet. 12 (citing Ex. 1005 ¶ 82). Patent Owner does not address the level of ordinary skill in the art at this preliminary stage of the proceeding. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art 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 neededOther
“According to Petitioner, “[n]o terms of the patent need construction for the purposes of IPR because the claims read on the prior art below under any construction consistent with Phillips.” Pet. 12. Patent Owner contends that “the Petition abuses and distorts the plain language of the claims to arrive at its conclusory ‘read on the prior art’ argument.” Prelim. Resp. 32. Patent Owner contends that Petitioner disregards “server” limitations recited in the challenged claims. Id. at 32– 35. Patent Owner, however, does not proffer construction of any claim terms. Id. We do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“At this stage, we do not need to resolve this dispute. Petitioner has met its initial burden of production to show that its references are prior art. See Pet. 3 (identifying filing and publication dates as well as bases). As such, the burden of production shifted to Patent Owner to refute Petitioner's argument by either showing the prior art does not actually qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner did not do so, we are satisfied that Petitioner has sufficiently shown that its asserted references qualify as prior art. Nevertheless, the parties are invited to further develop this record after institution if needed.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,396,244 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standard 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.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst-case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00578 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, and 9 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we deny institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: The ’826 Patent describes and claims aspects and functionality of cable and satellite television signal processing and communication systems. As of the alleged September 8, 2011 priority date, a person of ordinary skill in the art (“POSITA”) of the ’826 Patent would have had at least: i) a Bachelor of Science in electrical engineering or an equivalent subject and three or more years of experience working in the field of cable and/or satellite signal processing and communication systems; ii) a Master’s in electrical engineering or an equivalent subject and one or more years of experience working in the field of cable and/or satellite television signal processing and communication systems; or iii) a Ph.D. in electrical engineering or an equivalent subject and at least some experience working in the field of cable and/or satellite television signal processing and/or communication systems. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 9 (citing Ex. 1003 ¶¶ 30–31) (internal citation omitted). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties indicate that the district court in the Charter case (2:22-cv-00125) construed “network management messages” in the claims of the ’826 patent to mean “messages which report on the network based on the measured characteristics.” Pet. 10 (citing Ex. 1009, 29); Prelim. Resp. 10. Petitioner contends this construction is consistent with the ordinary and customary meaning of the claim language. Pet. 25. Patent Owner asserts that, in the Cox case (2:23-cv-01049), the parties agreed that “network management messages” should be given its plain and ordinary meaning. Prelim. Resp. 10 (citing Ex. 2001, 2). Patent Owner asserts that its arguments “do not turn on the construction of ‘network management messages’ so there is no need to construe that, or any other, term of the ’826 Patent claims at this stage of the proceeding.” Id. As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10
- BurdenNot shown unpatentable
“While Petitioner mentions portions of Renken that it considers relevant to limitation 1h, Petitioner does not explain how it reads each aspect of limitation 1h on Renken. For example, Petitioner does not identify what in Renken corresponds to the “network management messages,” what corresponds to the “measured characteristic of the received signal” that “is different than said network management messages,” and what discloses that the “measured characteristic” is the basis for “controlling transmission of the network management messages” from the “receiver” “back to the headend.” b) Conclusion for Claim 1 Accordingly, Petitioner has not shown a reasonable likelihood to prevail in demonstrating that Renken in view of the general knowledge of a POSITA discloses limitations 1a and 1h of claim 1.7 Thus, we do not reach the parties’ contentions concerning other claim limitations or Renken’s priority date.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 9,825,826 - Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution deniedPTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,265,096 - PTAB · Jul 9, 2024 · IPR2024-00120 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 11, and 26–34 on all asserted grounds, finding a reasonable likelihood of prevailing on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“2 While the ’230 patent is currently involved in a parallel district-court case, Petitioner argues that “[i]nstitution is appropriate under Fintiv . . . .” Pet. 157. Petitioner also states that “if this proceeding is instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Id. Patent Owner does not challenge Petitioner’s argument. Accordingly, and in view of Petitioner’s stipulation, it is not necessary to reach Petitioner’s discretionary denial arguments. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to section II.A)).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree (B.S.) in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 7 (citing Ex. 1004 ¶¶ 5–17, 79–84). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’230 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,191,230 - PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. 8 The present record does not include any objective evidence of nonobviousness. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413
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.