• Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Nov 21, 2022 · IPR2021-00959 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–3, 6, 7, 9, and 18 are unpatentable as anticipated by Kodialam; the Board did not reach the Kodialam–AAPA obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Jeffay, Petitioner contends a person of ordinary skill in the art (or “POSITA”) would have possessed “a bachelor’s degree in computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience managing and configuring computer networks, including experience with networking protocols and network routing.” Pet. 15 (citing Ex. 1003 ¶ 54). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’781 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “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) (2020). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner notes that the parties have put forth certain terms for construction in the underlying litigation, but Petitioner contends that no terms require construction in this case. Pet. 15–16. Patent Owner also does not put forth any terms for construction. PO Resp. 5–6. We determine that no terms require explicit construction. See, e.g., 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 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner contends that Petitioner fails to cite any express teaching of the “identifying” step in Kodialam, and, instead, “the Petition relies solely on Dr. Jeffay’s testimony in an attempt to fill the evidentiary gap.” PO Resp. 14–15 (citing Pet. 23–24; Ex. 1003 ¶ 67); PO Sur-reply 13. Patent Owner further contends that Dr. Jeffay’s supporting testimony “is untethered to any supporting evidence.” PO Resp. 15; see also PO Sur-reply 14–16 (similar arguments). Patent Owner further disputes Petitioner’s analysis to the extent that Dr. Jeffay references critical links that are used for the generation of a multicast routing tree, not a unicast transmission. PO Resp. 16–17 (citing Ex. 1004, Abstr.). Contrary to Patent Owner’s arguments, however, Petitioner cites directly to Kodialam in conjunction with Dr. Jeffay’s testimony. In particular, Petitioner cites Kodialam’s disclosure of solving “the maximum multicast flow problem” by first computing “critical links.” Pet. 23–24 (quoting Ex. 1004, 10:49–57). Petitioner also cites Kodialam’s claim 7 (id. at 24), which discloses “generat[ing] the set of critical links for sets of unicast pairs, each unicast pair defined between the source and one of the plurality of receivers.” Ex. 1004, 16:62–65. These disclosures both support Dr. Jeffay’s testimony and independently establish that Kodialam describes identifying unicast traffic requirements, because Kodialam’s system identifies and prioritizes critical unicast links. See Ex. 1004, 10:49–57, 11:9–26, 16:62–65. For similar reasons, these disclosures also describe the identification of the “first traffic configuration” of unicast packet traffic. See id. Thus, we are persuaded that Kodialam discloses the “identifying” step of claim 1.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Petitioner contends Kodialam qualifies as prior art under 35 U.S.C. § 102(e) based on its filing date. Pet. 16–17. Patent Owner does not dispute the prior art status of Kodialam. We have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. We determine that Kodialam qualifies as prior art under 35 U.S.C. § 102(e) because Kodialam’s filing date of September 29, 2000, is before the earliest effective filing date of the challenged claims, which is November 21, 2003. Ex. 1001, code (22); Ex. 1004, code (22).” slip op. at 12

  Patent outcomesUS 7,382,781 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,382,781
• Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Nov 18, 2022 · IPR2021-00769 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 2, 7–13, and 15 are unpatentable as obvious over Brockners and Lasserre, both alone and in further view of RFC 3386.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not propose a definition for a POSITA but contends that “Petitioner fails to prove unpatentability even if the Board were to apply Petitioner’s proposed definition.” PO Resp. 2. We adopt and apply Petitioner’s definition of the level of ordinary skill in the art at the time of the claimed invention because, based on the record, this proposal appears to be consistent with the ’656 patent, the asserted prior art, and is supported by the testimony of Dr. Weissman. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that “no express constructions are necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 20. Although Patent Owner also does not provide any express construction, in its Sur-Reply, Patent Owner contends that, according to the recited language of claim 12, the “learning” step “must be based on communication between the first and third provider edge nodes,” and “such communication must occur while the first provider edge node is functioning as the working node.” See PO Sur-Reply 1. Further, Patent Owner contends that “all challenged claims require the ‘first provider edge node’ to be ‘a protection node’ (as opposed to a ‘working node’) when it sends the flush request.” Id. at 4. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Rather, we address the “learning” step and “first provider edge node” based on the parties’ explicit arguments with respect to the prior art references of Brockners and Lasserre.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As Petitioner explained during oral arguments, in Lassere, once provider edge router PE2 receives the packet, it will know that it received it over tunnel 201 and that the return path for tunnel 201 is tunnel 102, and it then creates a MAC address entry in the MAC table to reach M1 over tunnel 102. Tr. 8:13–16 (“a table that says, look, if I want to reach M1, I know I can reach it over tunnel 102, that that’s the tunnel that can take me to that MAC address 1”); see also Ex. 1005, 12. Petitioner contends that “[t]he PE learns both the MAC address and a tunnel for associating to the equipment,” and that “[t]he claims require learning a MAC address for the first customerpremises equipment,” wherein “we can see that the entry stored a MAC address, M1, that is for the first customer-premises equipment, A1.” Tr. 12:7–11. On the complete record before us, we find availing Petitioner’s contention that N-PE 3 possesses MAC address entry M1 that is for first customer-premises equipment, A1, by associating M1 with tunnel 102, identifying A1 as the source behind N-PE 1. As Petitioner points out, similar to Lasserre, the description of “MAC address learning that the [’656] patent consistently gives” is, with a broadcast message received by a provider edge node, the provider edge node “associates the source MAC address within [the broadcast message] with a tunnel that is leading to that equipment.” Tr. 11:2–5; see also Ex. 1001, 2:67–3:6. Having reviewed Petitioner’s arguments and supporting evidence in the complete record, notwithstanding Patent Owner’s arguments to the contrary, we determine Petitioner has demonstrated by a preponderance of the evidence that the combination of Brockners and Lasserre teaches 1) “a third provider edge node possessing a media access control (MAC) address entry for the first provider edge node,” as recited in claim 1; and 2) “leading, with the third provider edge node, a first media access control (MAC) address for the first customer premises equipment, based on said communicating,” as recited in claim 12.” slip op. at 23

  Patent outcomesUS 8,284,656 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,284,656
• Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Nov 16, 2022 · IPR2021-00768 · APJ Thu A Dang · IPR · Final written decision

  Claims 17–19, 21–23, 25, and 26 are unpatentable: Passint anticipates claims 17, 18, 21, and 22; Passint and Chen render claims 19, 21, and 23 obvious; Dally renders claims 17, 18, 21, and 22 obvious …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that a person of ordinary skill in the art (“POSITA”) related to the ’998 patent would have “at least a master’s degree in computer science or electrical engineering in the field of computer networking,” wherein “[a]dditional graduate education could substitute for professional experience, or significant experience in the field of computer networking could substitute for formal education.” Pet. 16–17 (citing Ex. 1003 ¶ 33).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “FIG. 4.” Pet. Reply 7. That is, even if “the parties do not dispute that Figure 1 applies to the Passint invention as a whole” (PO Sur-Reply 15), Petitioner has met its burden of establishing anticipation if it shows that each and every element in claim 17 is found in the single embodiment set forth in Figure 4 of Passint. Thus, although Patent Owner argues that “Petitioner never explains why Passint’s nodes 22, 24, and 26 are alleged to be router cluster nodes in a cluster router” (id.), Petitioner nevertheless can establish anticipation by showing that Figure 4 of Passint discloses router cluster nodes in a cluster router, as recited in claim 17. As Petitioner persuasively points out, contrary to Patent Owner’s contention, “the Petition does not cite Passint’s FIG. 1 as disclosing the ‘router cluster node,’” but rather, “specifically refers to Passint’s router chips 50/150 as disclosing the ‘router cluster node’ of the ‘router cluster’ of Passint’s FIG. 4.” Pet. Reply 12.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “view of Chen renders the limitations as recited in claims 19, 21, and 23 as obvious, contending that it would have been obvious to combine the references and citing Dr. Weissman’s testimony for support. Pet. 37–46 (citing Ex. 1004, 5:52–58, 11:9–16, 12:1–4, 12:39–43, 13:21–28; Ex. 1008, 6, 7, 13; Ex. 1003 ¶¶ 116–136).” slip op. at 22

  Patent outcomesUS 7,483,998 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,483,998
• Cisco Systems, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Nov 16, 2022 · IPR2021-00960 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 2, 4, 5, 7–10, 12, 14–17, and 19 as obvious over Mateski; claims 6, 13, and 20 over Mateski and Abdo; claims 3, 11, and 18 over Mateski and …

  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 “a bachelor’s degree in electrical engineering, computer engineering, or equivalent, and two years of professional experience relating to communication networks,” as well as “a working knowledge of the communication network art that is pertinent to the ’733 patent.” Pet. 11 (citing Ex. 1003 ¶ 20). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Nader Mir. Ex. 1003 ¶ 20. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 6. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We disagree with Patent Owner’s interpretation. The ’733 patent states that “a session is set up using the probe session identifier,” and “[t]he session can include setting up any of a variety of different services including a call.” Ex. 1001, 5:10–13 (emphasis added). The ’733 patent’s use of the phrase “can include” indicates that the described features of a session are optional, not requirements. Id.; see Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1137 (Fed. Cir. 2011). This is consistent with the other portions of the ’733 patent cited by Patent Owner, which similarly indicate that setting up a service or call are examples of a session, not requirements. Ex. 1001, 6:31–34 (“UE 508 sends signaling messages, such as for setting up a call or establishing a service”) (emphasis added); id. at 9:4–7 (“related to a session such as a call or a service”) (emphasis added). Because Patent Owner’s interpretation is not consistent with the written description, we decline to adopt it. Nonetheless, as discussed below, even if we were to assume that the term “session” means “setting up any of a variety of different services including a call,” the asserted prior art teaches the disputed claim limitation. See Section II.D.2.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Patent Owner argued at the oral hearing that Petitioner relies on Mateski’s test code and unique tracking number together as teaching the probe session indicator. Tr. 14:10–16:6. And, according to Patent Owner, Petitioner does not show that Mateski teaches determining the presence of both the test code and the unique tracking number in the test packet. Id. Patent Owner’s argument is not timely because it was presented for the first time at the oral hearing. See Tr. 16:2–14; PO Resp. 9–13; PO Sur-reply 2–7; Consolidated Trial Practice Guide, 85–86 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“TPG”) (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”). Moreover, Patent Owner’s argument is not persuasive. Petitioner asserts in the Petition that “Mateski’s test code separately and taken together with the assigned unique tracking number corresponds to ‘a probe session indicator.’” Pet. 26 (emphasis added); see also id. at 31–32 (“a packet with a loop-back test session indicator (e.g., test code separately and together with an assigned unique tracking number), which corresponds to the claimed ‘probe session indicator.’”). In other words, Petitioner relies on Mateski’s test code by itself as teaching the claimed probe session indicator. Id. at 26, 31–32. And, as discussed above, Mateski expressly teaches “determin[ing]” if the test code is “present” in the test packet. Ex. 1005, 3:2–5, 7:60–61.” slip op. at 11

  • BurdenUnpatentable

    “Patent Owner’s argument is unavailing. Petitioner and Dr. Mir each identifies specific portions of Mateski that teach determining the presence of the test code in the test packet. Pet. 32 (citing Ex. 1005, 2:66–3:5, 7:60–61); Ex. 1003 ¶¶ 101, 103 (citing Ex. 1005, 2:66–3:5, 7:60–61). For example, Mateski states that “network node 120 could read the header of the first packet to determine if the first test code is present by checking if a single bit representing the first test code is set to one.” Ex. 1005, 3:2–5 (emphasis added); see also id. at 7:60–61 (“Node 320 reads the packet header to determine whether it contains a test code.”). Patent Owner does not address the specific portions of Mateski cited by Petitioner and Dr. Mir. See PO Resp. 9–11; PO Sur-reply 2–5. Patent Owner argued at the oral hearing that Petitioner relies on Mateski’s test code and unique tracking number together as teaching the probe session indicator. Tr. 14:10–16:6. And, according to Patent Owner, Petitioner does not show that Mateski teaches determining the presence of both the test code and the unique tracking number in the test packet. Id. Patent Owner’s argument is not timely because it was presented for the first time at the oral hearing. See Tr. 16:2–14; PO Resp. 9–13; PO Sur-reply 2–7; Consolidated Trial Practice Guide, 85–86 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“TPG”) (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”). Moreover, Patent Owner’s argument is not persuasive. Petitioner asserts in the Petition that “Mateski’s test code separately and taken together with the assigned unique tracking number corresponds to ‘a probe session indicator.’” Pet. 26 (emphasis added); see also id. at 31–32 (“a packet with a loop-back test session indicator (e.g., test code separately and together with an assigned unique tracking number), which corresponds to the claimed ‘probe session indicator.’”). In other words, Petitioner relies on Mateski’s test code by itself as teaching the claimed probe session indicator. Id. at 26, 31–32. And, as discussed above, Mateski expressly teaches “determin[ing]” if the test code is “present” in the test packet. Ex. 1005, 3:2–5, 7:60–61. Further, Petitioner shows that Mateski also teaches determining the presence of the unique tracking number in the test packet. Specifically, Mateski teaches that the network nodes read the unique tracking number from the header of the test packet. Pet. 32; Ex. 1005, 7:54–58 (“the test packet could be used to store the . . . unique tracking number . . . to be read by the nodes 320 and 330.”). And the evidence of record indicates that a person of ordinary skill in the art would have known that because the network nodes read the unique tracking number from the test packet, the network nodes determine that the unique tracking number is present. Pet. 32; Ex. 1003 ¶ 104. Patent Owner asserts that Mateski’s “act of reading” the test code does not “in and of itself constitute[] a determination” of its presence in the test packet, but Patent Owner does not identify specific evidence to support that assertion. PO Sur-reply 4. For the foregoing reasons, Petitioner has shown that Mateski teaches determining the presence of the probe session indicator.” slip op. at 11

  Patent outcomesUS 8,665,733 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,665,733
• Petitioner v. Ubiquitous Connectivity, LPAdverse judgment
  PTAB · Nov 9, 2022 · IPR2021-01355 · APJ Georgianna W Braden · IPR · Adverse judgment

  The Board entered adverse judgment against the Patent Owner on instituted claims 1–14 and 25 after construing its disclaimer as a request for adverse judgment.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Here, Patent Owner has disclaimed all claims in the instituted trial proceeding such that there are no remaining claims at issue in the trial. Thus, we construe Patent Owner’s statutory disclaimer of claims 1–14 and 25 of the ’999 patent as a request for adverse judgment, and we grant the request for adverse judgment as to the instituted claims. III. ORDER In consideration of the foregoing, it is hereby ORDERED that adverse judgment is entered against Patent Owner as to claims 1–14 and 25 of the ’999 patent; and FURTHER ORDERED that this proceeding is hereby terminated.” slip op. at 4

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesOther

    “description. Construing Patent Owner’s statutory disclaimer of all claims remaining in the trial as a request for adverse judgment and granting the request precludes Patent Owner under the estoppel provision of § 42.73(d)(3)(i) from obtaining in continuing applications or other subsequent proceedings before the Office claims patentably indistinct from the disclaimed claims. Cf. Ex Parte Aoki, Appeal No. 2012-010117, 2015 WL 3827164 (PTAB June 15, 2015) (affirming Examiner’s final rejection of claims patentably indistinct from claims on which adverse judgment had been entered against applicant in a prior interference proceeding);” slip op. at 4

  None
  Patents in suitUS 10,394,999
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00699 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–5 over Cheng, claims 1–3, 6–11, and 12–18 on the stated Cheng-based grounds, including combinations with Shirali and Douglas.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”), filed a Preliminary Response. Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on October 18, 2021, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “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). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “IV. CONCLUSION43 Petitioner has shown, by a preponderance of the evidence, that: (1) claims 1–5 are anticipated by Cheng; (2) claims 1, 2, 6–10, and 12–18 would have been obvious over” slip op. at 83

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Petitioner’s rationale for combining Nishio with Cheng is faulty because it misstates Nishio’s teachings. Dec. on Inst. 40–41. We found that “Nishio does not teach that setting an arbitrary number of subcarriers avoids reporting for each subcarrier,” and, rather, that “Nishio achieves this efficiency by averaging CIRs of the usable blocks and transmitting to the base station only a CQI corresponding to the averaged CIR together with the block numbers.” Id. (citing Ex. 1009 ¶¶ 60, 66). Accordingly, we determined that Petitioner had not established a reasonable likelihood that the subject matter of claim 4 would have been obvious over the combination of Cheng and Nishio. Id. at 41.” slip op. at 77

  Patent outcomesUS 7,742,534 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,742,534
• Ericsson Inc. v. Koninklijke KPN N.V.Instituted
  PTAB · Oct 6, 2022 · IPR2022-00557 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR on claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 based on obviousness over Foti and the listed RFCs, Wright, and Lloyd.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may be instituted only if “the information presented 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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’669 Patent. Accordingly, we institute an inter partes review of claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 of the ’669 Patent on the ground of unpatentability raised in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d) are considered in the evaluation of whether the same or substantially the same art or arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 10. Becton, Dickinson identifies these three factors as (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; and (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art. Becton, Dickinson, Paper 8 at 17–18.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “At this stage of the proceeding, on the present record, we determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success from that combination. As discussed above, we are persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. We are not persuaded by Patent Owner’s argument. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, which Patent Owner has not pointed out, but accepting that Patent Owner has no burden of persuasion, we determine that the motivation proffered by the Petition is sufficient for institution.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot reached

    “Petition, we must also consider any objective evidence of nonobviousness put forward by the parties. Petitioner acknowledges, and Patent Owner emphasizes, that Patent Owner submitted an European Telecommunications Standards Institute (ETSI) Telecommunications and Internet Converged Services and Protocols for Advanced Networking (TISPAN) Change Request related to the embodiments recited in the ’669 Patent. Ex. 2008, 5; Prelim. Resp. 1–2. Patent Owner further asserts that the standards agency adopted it and that adoption is industry praise and supports the nonobviousness of the challenged claims. Prelim. Resp. 6–7, 65 (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1334 (Fed. Cir. 2016)). Patent Owner also asserts that Petitioner’s expert in the District Court Case, Dr. Jeffay, admitted that the Change Request was “related to the invention claimed in the ’669 Patent,” and thus has nexus to the challenged claims, being reasonably commensurate with the scope of the challenged claims. Id. at 65 (quoting Ex. 2008, 5). On this record, however, we cannot verify the nexus to the challenged claims merely through the testimony of Petitioner’s expert in the District Court Case. That expert testified: “I also understand that KPN and TNO submitted an ETSI TISPAN Change Request related to the invention claimed in the ’669 Patent in January 2009.” Ex. 2008, 5 (emphasis added). Although the expert’s testimony is evidence, it is only weak evidence, as it is not supported by any underlying documentation, such as the Change Request itself or a comparison of that Change Request and the issued claims of the ’669 Patent. As such, we remain open to further consideration of this evidence of nonobviousness through industry praise, but determine it to be insufficient to overcome the case for obviousness of the challenged claims provided in the Petition at this stage of the proceeding.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,667,669
• Nokia Of America Corporation v. TQ Delta, LLCInstituted
  PTAB · Sep 27, 2022 · IPR2022-00666 · APJ Robert J Weinschenk · IPR · Institution

  Instituted review of claims 1–4 on all grounds, finding a reasonable likelihood of prevailing on obviousness over Mazzoni and VDSL1.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’048 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’048 patent on all the grounds of unpatentability in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. “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’s assertion that claims 1–4 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 44–46, 52–55. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Sections II.E.1, II.E.3. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 6

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “§ 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’048 patent in February 2014. Prelim. Resp. 12; Ex. 2001, 34–35; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 79. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.1 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’048 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards.2 Reply 2; Ex. 1037, 39; Ex. 1038, 1–8; Ex. 1039, 1–8; Ex. 1040 ¶ 3. Although Patent Owner has not filed a complaint against Petitioner for infringement of the ’048 patent, Patent Owner did file a complaint against Petitioner for infringement of another patent that includes similar claims. Ex. 1026, 5 (“asserts infringement of . . . United States Patent Nos. . . . 7,844,882”); Ex. 2031, 5 (“Family 3 Patents”); compare Ex. 1001, 10:41–65, with IPR2022-00664, Ex. 1001, 11:39–12:12. Further, 2 Petitioner argued in a related district court case that Patent Owner’s communications do not provide a specific charge of infringement by a specific product that constitute actual notice under 35 U.S.C. § 287. Sur-reply 3; Ex. 2032, 11. Here, we rely on Patent Owner’s communications only as evidence that Petitioner had its own interest in filing the Petition, not that those communications provided sufficient notice under § 287. there is evidence that Patent Owner continues to demand that Petitioner “take a license to its entire portfolio,” including the ’048 patent. Reply 2–3 (emphasis omitted); Ex. 1040 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 9

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,276,048
• Nokia Of America Corporation v. TQ Delta, LLCInstituted
  PTAB · Sep 27, 2022 · IPR2022-00664 · APJ Lynne E Pettigrew · IPR · Institution

  Instituted IPR of claims 9–16 on both asserted obviousness grounds; the Mazzoni and VDSL1 combination presented a compelling challenge, and the second ground was also instituted.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “A. 35 U.S.C. § 315(b) Patent Owner argues that we should deny the Petition under 35 U.S.C. § 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’882 patent in February 2014. Prelim. Resp. 11–12; Ex. 2001, 33–34; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 83. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.5 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 5

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner argues that Petitioner filed the Petition at the behest of 2Wire and CommScope. Prelim. Resp. 26. Specifically, Patent Owner contends that Petitioner and CommScope are “‘featured partner[s]’ in business” who agreed to a “joint strategy.” Id. at 27; Sur-reply 3–4. According to Patent Owner, Petitioner filed petitions challenging certain patents that 2Wire and CommScope are “unquestionably time barred from challenging,” even though Petitioner is not accused of infringing them. Prelim. Resp. 25–27; Sur-reply 2–3. And, in “exchange,” CommScope filed petitions challenging certain other patents that Petitioner is accused of infringing. Prelim. Resp. 26–27; Sur-reply 3. Patent Owner also contends that Petitioner and CommScope used the same declarants to support their respective petitions. Prelim. Resp. 27; Sur-reply 4. On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’882 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards. Reply 2; Ex. 1034, 38–39; Ex. 1035, 1–8; Ex. 1036, 1–8; Ex. 1037 ¶ 3. Thereafter, on August 13, 2021, Patent Owner filed a complaint in the Eastern District of Texas accusing Petitioner of infringing several patents, including the ’882 patent. Ex. 1026, 5; see Reply 2–3. Further, there is evidence that Patent Owner “continues to “take a license to its entire portfolio,” including the ’882 patent. Reply 3 (emphasis omitted); Ex. 1037 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “to deny institution in light of parallel district court litigation. Prelim. Resp. 28–39; Sur-reply 7–8. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ litigation_memo_20220621_.pdf. “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’s assertion that claims 9–16 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 43–45, 51–54. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Section III.F. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “5. Summary For the foregoing reasons, Petitioner makes a sufficient showing that the combination of Mazzoni and VDSL1 teaches or suggests all the limitations of claims 9–16 and that a person of ordinary skill in the art would have combined the references in the manner asserted. Accordingly, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that claims 9–16 are unpatentable as obvious over the combined teachings of Mazzoni and VDSL1.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,844,882
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.No claims unpatentable
  PTAB · Sep 8, 2022 · IPR2021-00560 · APJ Russell E Cass · IPR · Final written decision

  Claims 11–17 were not shown unpatentable under either obviousness ground because the evidence did not establish the claimed initial transmission of control information on the specified channels.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “itself. Claim 11 states that, after the secondary station receives the acknowledgement, “control information is initially transmitted on an uplink control channel and a downlink control channel” between the primary station and secondary station. The use of the word “initially” here signifies something that occurs first, or at the beginning.3 Thus, saying that control information is “initially transmitted on an uplink control channel and a downlink control channel” signifies that control information is transmitted for the first time on those particular uplink and downlink control channels. Thus, the plain meaning of the claim language indicates that, after the secondary station receives the acknowledgement, control information is transmitted for the first time on the claimed “uplink control channel” and “downlink control channel” “between the primary station and said secondary station.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp and Chen teach limitation 11(c) and the comparable limitation in claim 15. Petitioner’s arguments concerning Lomp are discussed above with respect to Ground 1. As to Chen, Petitioner identifies Chen’s feedback channels of the forward and reverse link as the claimed uplink and downlink control channels, but does not establish when control information is “initially transmitted” on those channels. Pet. 62 (citing Ex. 1003 ¶ 133). On the other hand, Dr. Lanning testifies that “[t]he control information that is exchanged in steps 330 and 350 of Chen is not the initial transmission of control information,” because “[s]uch initial control information would have been exchanged in Chen before the operation of Chen at the idle rate in step 310” in order to adjust the transmission power to an appropriate level for the idle rate. Ex. 2004 ¶ 276. We find Dr. Lanning’s testimony to be credible because it is consistent with Chen’s statement that “each base station must rapidly and accurately adjust the transmission power for the signals which it transmits to the mobile station,” and Chen’s description of a closed loop power control system for adjusting the transmission power by comparing measured power level against a threshold value, such that “if the power level is lower than desired, the base station increases the transmission power of its transmitted signals, otherwise the transmission power is decreased.” Ex. 1006, 1:56–59, 1:66–2:11; Ex. 2004 ¶¶ 191–193.” slip op. at 33

  Patent outcomesUS 7,089,028 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,089,028

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.