- Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · Aug 7, 2023 · IPR2023-00429 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“We do not find Petitioner’s “natural harmony” rationale sufficient reasoning to support why a person of ordinary skill in the art would have modified Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao teach that metadata is sent first and content or raw data is sent second. They do not teach assigning priorities to the files and their associated metadata and then comparing the priorities to determine which is greater. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm would have been reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Id. at 23. The Petition does not explain why (beyond hindsight) a person of ordinary skill in the art would have modified Sigurdsson to assign and compare priorities by reconfiguring Sigurdsson’s priority algorithm when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. The additional arguments for combining the references presented by Petitioner (Pet. 24–28) do not overcome the failure of the references to disclose this feature of the claims. b) Conclusion For the reasons given, we are not persuaded that Petitioner has demonstrated sufficiently that the “priority-related” limitations including limitations 1c and 1f are taught or suggested by Sigurdsson, Shappell, and Rao. We, therefore, determine that the Petition does not demonstrate a reasonable likelihood of prevailing on this obviousness challenge as to claim 1.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As discussed supra, in Section III.E, the priority-related claim limitations 1c and 1f require assignment of priority to the metadata and file and a comparison of the assigned priorities. Petitioner does not show a teaching in Brown of an assignment of priority to the metadata and file, or of a comparison of the assigned priorities, or use of a “priority assignment configuration” for assigning the priorities. Pet. 53. At most, Brown, as modified by Hesselink,4 discloses that metadata may be sent before sending files or portions of files. See id. None of the other references teaches that there is an assignment of priority to metadata or a comparison of the priorities of the metadata and files. As discussed, Brown as modified by Hesselink, at most, teaches that metadata may be transmitted before files or portions, and Shappell and Rao 4 Petitioner relies on Hesselink for disclosing the first client automatically transferring a copy of a file specifically “responsive to the user modifying a content” of the file, as recited in limitation 1b. Pet. 47 (emphasis omitted). teach that metadata is always sent before files. See discussion supra in Section III.E.1. As is discussed supra, even if the metadata is sent, or even “categorically” sent, before files are sent, that does not teach assignment of priorities or a comparison of metadata and file priorities as required by the claim limitations. Id. Nor has Petitioner sufficiently demonstrated that Shappell or Rao suggest assigning different priorities to metadata and files and comparing those priorities. As previously observed with respect to Sigurdsson, the Petition does not persuasively explain why a person of ordinary skill in the art would have modified Brown to assign and compare priorities when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. Accordingly, for the reasons given, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1.” slip op. at 22
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,289,607 - T-Mobile USA, Inc. v. Dali Wireless Inc.InstitutedPTAB · Aug 2, 2023 · IPR2023-00832 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 1–22 on all asserted grounds and granted T-Mobile’s motion to join IPR2022-01345, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’343 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it “Petitioner will maintain only an ‘understudy’ role in the proceeding, if joined.” Id. at 6.” slip op. at 8
NonePatents in suitUS 11,006,343 - PTAB · Aug 1, 2023 · IPR2023-00820 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 1–22 on all petition grounds and granted CommScope’s motion to join IPR2022-01345, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any 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.”” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it is willing to accept a limited, “‘understudy’ role” to Ericsson IPR petitioners and to assume a primary role only if the Ericsson IPR petitioners cease to participate in the IPR. Id. at 6.” slip op. at 8
NonePatents in suitUS 11,006,343 - Ericsson Inc. v. Dali Wireless, Inc.InstitutedPTAB · May 17, 2023 · IPR2022-01570 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–20, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary In sum, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over Wu and Sabat ’426.10” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., 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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 72. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera. Prelim. Resp. 21–26. In its discussion of Fintiv, Patent Owner, in fact, does not address Petitioner’s stipulation. Id. In light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Interim Procedure 3.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“suggests having transceiver 260 (the operator hub) provide radio resources via CPRI. Pet. 35–36. Petitioner asserts that Wu discloses that digitized signals may be transmitted using the CPRI protocol. Id. Further, Petitioner argues that an ordinarily skilled artisan would have been motivated to modify Wu to provide radio resources via CPRI because digital signals are more robust, noise tolerant, and less susceptible to attenuation (allowing the signal to be transmitted over longer distances). Id. at 36. Petitioner asserts that CPRI and other open standards provide a flexible cheaper and more scalable modular environment. Id. According to Petitioner, digital circuitry and components are typically less expensive and more reliable. Id. Petitioner also argues that an ordinarily skilled artisan would have had a reasonable likelihood of success in modifying Wu. Id.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“For this Decision, we adopt the constructions set forth in the ’1242 Institution Decision. In particular, for the reasons expressed in the ’1242 Institution Decision, we construe (i) “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including RF carriers, CDMA codes, and TDMA time slots that include underlying data that is transmitted; and (ii) limitation 1.2 as having the recited operator hub provide the plurality of radio resources to a radio access network using the CPRI protocol. ’1242 IPR Institution Decision 9–18. To the extent the parties in this proceeding disagree with either of these constructions, they need to set forth that disagreement in this proceeding and not merely reference arguments set 7 The initial institution decision in the ’1242 IPR (Ex. 2001) was subject to a remand by the Director. The initial institution decision and the institution decision in the ’1242 IPR after remand (i.e., the ’1242 IPR Institution Decision) set forth the same claim constructions and claim construction analysis. forth in papers in the ’1242 IPR. 37 C.F.R. § 42.6(a)(3); see also Consolidated Trial Practice Guide 35 (Nov. 2019)8.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,026,232 - PTAB · May 17, 2023 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 8–23 on all grounds in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. 7 At this stage, neither party presents any objective indicia of non-obviousness. 8 Person of ordinary skill in the art. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (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 petitioner constructionDecided for petitioner
“To the extent “transaction controller” is limiting, Petitioner contends the following: As Mr. Zatkovich explains a POSITA would have understood, based for example on his or her knowledge and based on reading feature explanations such as the above, “transaction controller” as used in claims 8-23 with reference to such description of feature would include: (1) a mobile communication device” and (2) a processor (corresponding to processing chip 210 in the disclosure), that comprises a data channel. Pet. 13. (citing Ex. 1002 ¶ 94).9 Petitioner further contends that “a POSITA would understand that [‘transaction controller’] means ‘a mobile user interface device and a processor that comprises a data channel being adapted to wirelessly communication transaction data between said processor and a third party terminal.” Id. (citing Ex. 1002 ¶¶ 90, 95). For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “transaction controller.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“4. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution
The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand
On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232 - Ericsson Inc. v. Dali Wireless Inc.InstitutedPTAB · Mar 9, 2023 · IPR2022-01345 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–22 because the petition showed a reasonable likelihood that claims were obvious over Wu, alone or with Cannon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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). For the reasons set forth below, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–22 of the ’343 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The two proposals are materially similar. Nevertheless, Patent Owner’s proposed level of ordinary skill is more similar to the Board’s adopted level of skill (as proposed by a different petitioner) in the 1432-IPR See Ex. 2006 (1432-IPR institution decision). Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner, modified to insert “about” in place of the open-ended “at least,” which provides no upper bound on the level of experience of one of ordinary skill in the art, as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“(a) RF Carriers, CDMA Codes, and TDMA Time Slots We agree with the parties that “radio resources” encompass RF carriers, CDMA codes, and TDMA time slots. The specification identifies RF carriers, CDMA codes and TDMA time slots as examples of radio resources in several places. For example, a “key function is determining and/ or setting the appropriate amount of radio resources (such as RF carriers, CDMA codes or TOMA time slots) assigned to a particular DRU or group of DRUs to meet desired capacity and throughput objectives.” Ex. 1001, 12:5–10 (emphasis added). As another example, “the DAU Management Control module can adaptively modify the system configuration to begin to deploy, typically . . . slowly, additional radio resources (such as RF carriers, CDMA codes or TDMA time slots) for use by a particular DRU which need those radio resources within its coverage area. Id. at 12:59–64 (emphasis added); see also id. at 12:64–13:2 (describing “certain radio resources (such as RF carriers, CDMA codes or TDMA time slots)” (emphasis added)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms At this stage, no need exists to construe any other claim terms expressly to resolve the parties’ disputes. 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 8 This is consistent with the construction of the same term in the related ’499 patent or other patents in district court. See Ex. 2013 (Markman Order, Del.), 8; Ex. 2015 (Markman Transcript, W.D. Tex.), 2–3). 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 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,006,343 - Unified Patents, LLC v. Commworks Solutions, LLCAll claims unpatentablePTAB · Feb 13, 2023 · IPR2021-01297 · APJ John R Kenny · IPR · Final written decision
Claims 1–6, 9–13, and 16–20 are unpatentable under § 103 based on the Rune–ETSI and Pirkola–Rune–ETSI combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“or similar post-undergraduate education; and (2) at least two years of experience in mobile telecommunications, with more education substituting for less experience and vice versa.” Pet. 5–6 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not contest Petitioner’s definition of an ordinarily skilled artisan. See generally PO Resp. We adopt Petitioner’s proposed description of an ordinarily skilled artisan as it is supported by Dr. Haas’s testimony and is consistent with the ’846 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“b. Analysis We construe a transport address as “the current address through which the mobile subscriber can be reached,” which is Petitioner’s proposed construction excluding Petitioner’s proposed requirement that a transport address excludes a home address. The Specification supports the above construction. The Specification describes a transport address as “the current address where the subscriber is reachable.” Ex. 1001, 5:14–18. Moreover, Patent Owner does not dispute that a transport address is a current address where the mobile subscriber can be reached. PO Resp. 4–13.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues an ordinarily skilled artisan would have had a reasonable expectation of success in combining ETSI’s and Rune’s teachings because both references relate to mobile communications systems employing the same architecture and protocols. Pet. 19. Petitioner asserts that both references are directed to the components and methods used in GSM systems. Id. Petitioner further argues that, combined, these references teach a mobile communications system that recovers a mobile subscriber’s location identity information from one server to another. Id. According to Petitioner, ETSI is part of the standards framework under which Rune’s system exists, so incorporating ETSI’s teachings into Rune’s embodiments would have required at most minor modifications in server or database software and would have yielded predictable results consistent with thoroughly vetted GSM standards. Id. Patent Owner does not dispute that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings, nor does Patent Owner dispute that an ordinarily skilled artisan would have had a reasonable expectation of success in combining these teachings. PO Resp. 13–19. As set forth below, however, Patent Owner disputes that the combination of Rune and ETSI teaches or suggests every limitation of the challenged claims. Id. After reviewing the record, we determine that Petitioner has proven that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings in the manner proposed by Petitioner and had a reasonable expectation of success in so doing. See, e.g., Ex. 1008 ¶¶ 52–56.” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Upon review of the record, we determine that Petitioner has proven by a preponderance of the evidence that the combination of Rune and ETSI teaches limitation 1.1. As set forth in Section II.C.1 above, with our construction, a transport address does not have to be an IP address. Thus, we disagree with Patent Owner’s argument that the LMSI is not a transport address because it is not an IP address. Ex. 1008 ¶ 57.” slip op. at 31
Patent outcomesUS 8,923,846 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,923,846 - PTAB · Feb 7, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on all asserted grounds challenging claims 1–20, finding a reasonable likelihood of unpatentability and declining Fintiv denial based on compelling challenges.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Thus, the record does not support Patent Owner’s proposed requirement that, to be radio resources, the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include underlying data that is transmitted. ii. Our Partial Construction For this Decision, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including RF carriers, CDMA codes, and TDMA time slots that include underlying data that is transmitted.11” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, the related limitations in independent claims 12 and 20 clearly specify that an operator hub provides the plurality of radio resources using the CPRI protocol. Claims 12 and 20 each recite “receiving a plurality of radio resources from an operator hub that operates using a Common Public Radio Interface (CPRI) protocol.” Ex. 1001, 14:45–47 (emphasis added), 16:5–8 (emphasis added). From reviewing the Specification, we see no reason why claim 1 should be construed differently from claims 12 and 20 in this regard, and neither party has provided any such reason. Second, the language of limitation 1.2 also supports our construction. Ex. 1001, 13:48–53. The verb “provides” grammatically agrees with the subject “operator hub,” but not with the subject “one or more central nodes.” Id. The verb “provides” is singular and, as such, it agrees with the subject “operator hub,” which is also singular. With Patent Owner’s proposed construction, the subject for the verb “provides” is “one or more central nodes.” Prelim. Resp. 19–20. “One or more central nodes” is a subject comprising a singular term (“one”) and a plural term (“more central nodes”). Grammatically, the verb following a subject with singular and plural terms joined by “or” should agree with the nearest term in the subject to the verb, which with Patent Owner’s construction is “more central nodes.” The Gregg Reference Manual (11th Ed. 2011) (Ex. 3004) ¶ 1005. As mentioned, however, the verb “provides” is singular, and, as such, it does not grammatically agree with the plural term “more central nodes.” Thus, there is grammatic agreement between the subject and the verb “providing,” with our construction, but not with Patent Owner’s. Third, we do not read the Examiner’s quoted statement in the Supplemental Notice of Allowability as setting forth a construction of limitation 1.2. Ex. 1002, 120. The statement appears to merely provide a shorthand description of the limitation. Id. If it were intended to set forth a construction of the limitation, the construction would be erroneous for the statement also indicates that the recited central nodes enable wireless communications. Id. In limitation 1.2, the operator hub, rather than the central nodes, clearly enables wireless communications. Ex. 1001, 13:48–53.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“sufficiently shown that the combination of Hettstedt and Wellington teaches limitation 1.2, that an ordinarily skilled artisan would have been motivated to combine Hettstedt’s and Wellington’s teachings, and that an ordinarily skilled artisan would have had a reasonable expectation of success in combining those teachings. Regarding the disputed issues of a motivation to combine and a reasonable expectation of success, based on the current preliminary record, we agree with Petitioner that an ordinarily skilled artisan would have been motivated to apply Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic). Ex. 1003 ¶ 130. A threshold-based trigger avoids the need for the system to wait for user inputs. Id. Further, a threshold trigger is readily programmable and machine-executable. Id. Additionally, an ordinarily skilled artisan would have been motivated to apply Wellington’s teaching to Hettstedt’s system to improve the adaptability of that system. Id. A benefit of a threshold-based trigger is that system can fine-tune the load balancing by adjusting the threshold without the need to preprogram significant software. Id. We agree with Petitioner that Hettstedt’s and Wellington’s disclosures support their combination. Hettstedt discloses a goal of efficient load balancing. Ex. 1005 ¶¶ 11, 21, 44; Ex. 1003 ¶ 131. Wellington helps achieve this goal by eliminating the inefficiency of waiting for a user’s input. Ex. 1007, 4:50–52; Ex. 1003 ¶ 131. Hettstedt contemplates scenarios where waiting for a user input for load balancing is not realistic such as sudden “hot-spots” that need “dynamic distribution.” Ex. 1005 ¶ 29; Ex. 1003 ¶ 131. Wellington’s addresses this issue, disclosing that “carrier deployment and removal can occur quickly to handle dynamically changing characteristics in cell congestion.” Ex. 1007, 4:50–52; Ex. 1003 ¶ 131. Further, Hettstedt teaches that its system could be made “automatically adaptive.” Ex. 1005 ¶ 28; Ex. 1003 ¶ 131. An ordinarily skilled artisan would have had a reasonable expectation of success in combining Hettstedt and Wellington. Ex. 1003 ¶ 132. Hettstedt discloses how to determine a load. Ex. 1005 ¶ 44. The step of comparing the load to a threshold merely requires adding a simple “if/then” statement (e.g., IF load > threshold, THEN) to Hettstedt’s software. Ex. 1003 ¶ 132. No special components are required, just a standard processor. Id.; Ex. 1006 ¶¶ 40, 48; Ex. 1003 ¶ 132. Further, determining whether the load is beyond a “threshold” is a simple mathematical-type operation. Ex. 1003 ¶ 132.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Procedure”), 4–5 (June 21, 2022).19 “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner presents compelling unpatentability challenges. See Sections II, III above. We find that the evidence, if unrebutted in trial, demonstrates that “it is highly likely that the [P]etitioner would prevail with respect to at least one challenged claim.” OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (“A challenge can only ‘plainly lead to a conclusion that one or more claims are unpatentable’ ([Interim Procedure 4]) if it is highly likely that the petitioner would prevail with respect to at least 19 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf one challenged claim.”) (precedential); see also Sections II, III above. As such, we decline to exercise our delegated discretion under 35 U.S.C. § 314(a) to deny the Petition. slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232
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.