- PTAB · Jan 15, 2025 · IPR2024-00989 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim in each Petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - Cisco Systems, Inc. v. Portsmouth Network Corp.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00954 · APJ Stacey G White · IPR · Institution
The Board denied institution on claims 1–25 because Mitchell did not teach or render obvious the required failure propagation to each node and deactivation causing loss of connectivity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“the parties’ arguments, we understand Mitchell to teach the propagation of failure information from the location of the failure to the network’s edge or endpoints and that this propagation excludes nodes between the detected failure and the network’s core. Therefore, the question before us is whether one of ordinary skill in the art would have learned of the recited propagation and receipt to and from “each node of the other nodes of the plurality of network nodes traversed by the first set of links”8 from Mitchell’s downstream propagation of failure information. We are not persuaded that Petitioner’s showing is sufficient. Petitioner relies upon a circumstance where the failure occurs far upstream and uses that case to assert that Mitchell teaches the recited propagation and receipt. Claims 1 and 16, however, respectively recite the propagation to “each node” and “all nodes.” Mitchell, in contrast, does not teach propagation to each node, but rather it teaches continuing down the path to message only the remaining nodes in the path between the failure and the endpoints. It specifically and explicitly sets out to maintain connectivity with all nodes upstream of the failure. This is materially different from the claims of the ’637 patent, and Petitioner has not provided a sufficient explanation to establish that one of ordinary skill in the art would have found it obvious to extend Mitchell’s downstream-only propagation to instead” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and 16. See Prelim. Resp. 7–10. For example, claim 1 additionally recites, in relevant part, “deactivating a physical layer of the first set of links connected thereto, thereby causing a loss of connectivity in the first set of links.” Ex. 1001, 11:37–39 (limitation [1h]). Claim 16 similarly recites, in relevant part, “to deactivate the physical layer resources of each node to links in the first set of links connected to that node upon receiving the second message, to cause a loss of connectivity in the first set of links.” Id. at 12:54–58 (limitation [16g]). Thus, claims 1 and 16 both require deactivating the physical layer of nodes in order to cause a loss of connectivity in the first set of links. Petitioner asserts that Mitchell teaches that “the physical layer of the links connected downstream of these network elements are deactivated, which causes a loss of connectivity in the ‘group of links.’” Pet. 26 (emphasis omitted); see also id. at 36 (making same argument for claim 16). We are not persuaded that downstream deactivation teaches the deactivation of “each node” nor does it teach the “loss of connectivity in the first set of links.” This is true because Mitchell teaches the preservation of connectivity in upstream links. Petitioner does not argue that one of ordinary skill would have understood Mitchell to teach deactivation of the set of links, but rather Petitioner argues that there could be a circumstance where Mitchell may be unable to preserve connectivity because the failure happened at the most upstream location. This is not sufficient to teach a system that deactivates all nodes in the set of links in order to cause a loss of connectivity in the set of links because Mitchell sets out to maintain some degree of connectivity. We agree with Patent Owner that the disclosures of Mitchell would not have taught one of ordinary skill in the art the recited propagation and receipt of failure information to and by each of the nodes in the network nor would it have taught the recited deactivation to cause a loss of connectivity in the set of links. As such, Petitioner has not met its burden to demonstrate that Mitchell would have rendered independent claims 1 or 16 obvious. As to dependent claims 2–15 and 17–25, Petitioner makes no further allegations that would remedy the deficiency discussed above in regards to the independent claims. As such, Petitioner has not met its burden to show that any of claims 1–25 would have been obvious over the asserted art.” slip op. at 20
§ 103 obviousnesscites PhillipsPatents in suitUS 8,199,637 - PTAB · Dec 11, 2024 · IPR2024-00893 · APJ Peter D Shapiro · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Juniper would show at least one challenged claim obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“favor of discretionary denial, and factors 4 and 5 weigh against discretionary denial. Because we conclude that, on balance, factors 1–5 do not weigh in favor of discretionary denial, it is not necessary for us to make a determination about whether the merits are compelling. See Director’s Memo at 3–5; CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (Vidal Feb. 27, 2023) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). That being said, as discussed below in the Analysis section, we do find that Petitioner has met its burden of demonstrating a reasonable likelihood of showing that at least one of the challenged claims of the ’986 patent is unpatentable.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Based on the arguments presented in the Petition, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’986 patent challenged in the Petition. Accordingly, we institute a trial on all claims and all grounds asserted in the Petition. The Board has not made a final determination under 35 U.S.C. § 318(a) with respect to the patentability of the challenged claims. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–24 of the ’986 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 57
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(January 7, 2002), a person of ordinary skill in the art would have had: plus at least two years of industry experience or graduate-level academic experience with computer networking. Pet. 20 (citing Ex. 1003 ¶ 111). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’986 patent and the types of problems and solutions described in the ’986 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision, except that we remove the phrase “at least” to avoid unnecessary ambiguity in the level of ordinary skill in the art.7” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim: using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 20. Patent Owner applies the ordinary and customary meaning to the ’986 patent’s claim terms. Prelim. Resp. 3. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,118,602 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Microsoft Corporation v. Reald Spark, LLCAll claims unpatentablePTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision
Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39
Patent outcomesUS 10,740,985 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,740,985 - PTAB · Oct 3, 2024 · IPR2024-00506 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, and 14–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review 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.” See 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1, 2, 4–12, and 14–18 of the ’394 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, computer engineering, electrical engineering, or in an equivalent field, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1002 ¶¶ 62–63). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’394 patent and the types of problems and solutions described in the ’394 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 12. Patent Owner states that it applies the ordinary and customary meaning to the ’394 patent’s claim terms but does not propose any express interpretations. Prelim. Resp. 4. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted and emphasis added)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, we are persuaded that a POSITA would have been motivated to combine Weyman and Li as proposed by Petitioner. Pet. 21–25; Ex. 1002 ¶¶ 84–103; Ex. 1005 ¶¶ 4–5, 76, 98, 104–105, 119, 137–139, 162; Ex. 1007, 5:5–23, 1:17–19, 33:16–35:23. Patent Owner does not dispute that a POSITA would have been motivated to combine Weyman with Li’s channel joining processing unit. Furthermore, both references relate to similar subject matter, processing multicast stream requests, and Li’s channel joining processing unit addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005 ¶¶ 4–5 (“[A] primary object of the present invention is to provide a switching fabric, and units . . . [to] provide distributed multicast routing . . . . [and] to minimi[z]e the usage of bandwidth on links between the units of such a fabric.”); Ex. 1007, 1:17– 19 (“The present invention relates to the field of data communication, and, in particular, to a method, system, and access device for processing multicast service.”), 5:5–23 (“the maximum number of multicast channels that can be selected of a service port needs to be controlled”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). As pointed out by Petitioner, there is no apparent reason why these two concepts could not be combined together in a straightforward manner at the port level, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 21; Ex. 1002 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). Furthermore, we are also persuaded on this record that the same benefits would have existed and motivated a POSITA to combine Li’s channel joining processing unit with Weyman’s aggregated high-capacity ports. See Pet. 21; Ex. 1002 ¶¶ 93–94.” slip op. at 25
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - Freewheel Media, Inc. v. Almondnet, Inc.InstitutedPTAB · Sep 5, 2024 · IPR2024-00413 · APJ Lynne H Browne · IPR · Institution
Instituted IPR on claims 1–7 and 9 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding based on the filing by Petitioner of two additional parallel petitions or due to the alleged lack of particularity in the instant Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“and deny institution in this proceeding (IPR2024-00413) because Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 9. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00414 and IPR2024-00415, we agree with Patent Owner that plural petitions are not warranted. Given our Decisions to Deny Institution in IPR2024-00414 and IPR2024-00415, Patent Owner’s argument is unavailing with regard to the instant Petition.” slip op. at 10
- Other 314aDenied
“We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation grounds failed. Id. at 14. In finding that the petition lacked sufficient particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the instant Petition could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not address the level of skill in the art in its Preliminary Response. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00415 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), citing the unjustified third parallel petition and the resulting burden on the proceedings.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
Discretionary denialPatents in suitUS 7,979,307
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.