- PTAB · Apr 1, 2024 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 44–48 and 50 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review is authorized when “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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we grant institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaning
“Neither party proposes that we adopt any construction that was proposed before the ITC. The rules provide that we should consider an ITC determination on claim construction in an inter partes review proceeding. 37 C.F.R. § 42.100(b). However, the ITC made no determination on claim construction before the Section 337 investigation was terminated upon Petitioner’s request for arbitration. Prelim. Resp. 3. Accordingly, the ITC case does not provide any determination on claim construction that we must consider in this proceeding. We decline to explicitly construe “field of view” since neither party advocates for a particular construction. Therefore, we apply the plain and ordinary meaning of “field of view” in the analysis of limitations 44(c) and 44(f), which is “the maximum angle of view that can be seen through a lens or optical instrument,” which may be defined by an aperture, consistent with the textbook definitions discussed above.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner
“discredit[s], or otherwise discourage[s] the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). At this time, Patent Owner’s evidence is insufficient to establish that Retterath “criticizes, discredits or otherwise discourages” simultaneous use of Retterath’s waveguides and macro detector lens. See Ex. 1005, Fig. 9 (waveguide layer), Fig. 10 (macro detector lens). Patent Owner may be correct that Retterath describes waveguides and a macro detector lens as alternatives to one another. Prelim. Resp. 30. However, Patent Owner does not show that Retterath (or any other prior art) “criticizes, discredits or otherwise discourages” using the waveguides and macro detector lens together. Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (A reference “that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.”)” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,190,750 - PTAB · Apr 1, 2024 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5–8, and 10–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’381 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5–8, and 10–17) of the ’381 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “had an undergraduate degree in mechanical or electrical engineering or physics, plus 2-3 years of experience in LiDAR design.” Pet. 3. Patent Owner “adopts Petitioner’s definition of a [person of ordinary skill in the art (POSITA)] as having an undergraduate degree in mechanical or electrical engineering or physics and two to three years of experience in LiDAR design” for purposes of its Preliminary Response. Prelim. Resp. 4. Accordingly, for purposes of this Decision, we apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“construction for the term ‘field of view’” in the ITC investigation: “detection area defined by an aperture or lens tube.” Prelim. Resp. 19–20 (citing Ex. 2002, 2). Patent Owner notes that Petitioner relied, in the (now terminated) ITC proceeding, on various pieces of extrinsic evidence to support this construction. See id. at 20–22 (citing Ex. 2004, 282; Ex. 2005, 51, 54–56, 70; Ex. 2006, 28). However, Patent Owner does not appear to argue that this construction is correct or that we should adopt it. See id. at 19–22. We decline to adopt a construction at institution that neither party actually advocates. At this stage of the proceeding, we note that some of the definitions that were cited by Petitioner in the ITC proceeding are broader than the proposed construction. See Ex. 2004, 282 (defining “field of view” as “[t]he maximum angle of view that can be seen through a lens or optical instrument”). Thus, it appears that Petitioner’s ITC construction incorporates additional limitations that, at this stage of the proceeding, we are not persuaded are correct. Thus, for purposes of institution, we simply apply the plain and ordinary meaning of the term. If either of the parties believe that a construction of this term is necessary, they should address the proper construction during trial. C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“been motivated to combine Retterath and Borowski with predictable results. Pet. 13–19. Petitioner asserts that a person of ordinary skill in the art would have recognized that following Borowski’s suggestions of implementing each pixel in Retterath’s detector array as a “macro-cell” having multiple SPADs would have “the predictable benefits . . . for smart averaging in time and space, enhancing image depth and acquisition speed.” Id. at 14. Petitioner contends that the combined teachings of Retterath and Borowski would “enhance the signal to noise ratio of Retterath’s detectors, and thereby improve system performance.” Id. at 15 (citing Ex. 1003 ¶ 134). Petitioner argues that a person of ordinary skill in the art “would have been prompted to implement Retterath’s LiDAR system using multiple SPADs per pixel (as suggested by Borowski) to achieve the performance advantages of SPADs known before September 2015, such as a high data-rate output in combination with low-power operation (and with the high signal-to-noise ratio described above).” Id. at 16 (citing Ex. 1003 ¶ 135). Petitioner further contends that a person of ordinary skill in the art would have been motivated “to combine Retterath and Borowski to utilize multiple SPADs for each pixel to improve detection capability and accuracy.” Id. Petitioner also argues that a person of ordinary skill in the art “would have been prompted to implement the Retterath-Borowski combination due to Borowski’s express suggestion for ‘an improved trade-off between image depth resolution and fast data acquisition for the detection of movements’. . . by ‘local averaging between adjacent detectors to optimize the tradeoff between speed and sensitivity.’” Id. at 17 (citing Ex. 1006 ¶¶ 3, 26, 83, 136–138, 220, 221, 222, 233, 237, 249, 258, 267–271; Ex. 1003 ¶ 137). Finally, Petitioner argues that a person of ordinary skill in the art “would have found it obvious to combine Retterath and Borowski because doing so was the application of known techniques (Borowski’s suggestion for multi-SPAD detectors) to a known system (Retterath’s LiDAR system that utilized an array of detectors) ready for improvement to yield predictable results.” Id. at 17–18 (citing Ex. 1003 ¶ 138). At this time, Patent Owner does not dispute that there was a motivation to combine Retterrath and Borowski. Accordingly, we find that Petitioner has shown a reasonable likelihood of prevailing in showing that there is a motivation to combine these references.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,178,381 - Hesai Technology Co. Ltd. / Hesai Group et al. v. Ouster, Inc.Institution deniedPTAB · Mar 28, 2024 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, including under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner. With respect to Figure 22, Hall states: As shown in FIG. 22, behind each of the lenses in the cavity 174, are 16 laser emitters organized relatively horizontally, thereby combining for 32 total emitters. Behind the lens of the cavity 170 are 32 detectors that are positioned within a tube 176 of the unit 154. Ex. 1004, 6:67–7:5. Thus, Hall’s specification describes 32 detectors as being behind the lens of cavity 170. But, Annotated Figure 22 depicts 36 dark red circles, which does not match the 32 detectors described in Hall’s specification. Petitioner does not explain this discrepancy in the Petition. Petitioner cites to Dr. Hesselink’s testimony to support its assumption that Annotated Figure 22 shows the claimed arrangement of pixel columns. Pet. 20. Dr. Hesselink’s testimony is conclusory and deficient because it does not sufficiently explain why a POSITA would know the dark red circles in Annotated Figure 22 were the detectors. Ex. 1003, 65–66 (claim chart); see also id. ¶¶ 72–73. Petitioner next argues: “To the extent [Patent Owner] contends Hall does not disclose horizontal and vertical offset pixels, a POSITA would have found it obvious to arrange the pixels in this manner.” Pet. 21 (citing Ex. 1003 ¶¶ 30–36, 66–17). Petitioner’s only support for this argument is the testimony of Dr. Hesselink. Pet. 21. Petitioner, thus, attempts to substitute the testimony of Dr. Hesselink to teach the claimed arrangement of pixels. But, as explained in our Consolidated Trial Practice Guide2 (November 2019) at 36: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis . . . . [I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. Petitioner does not rely upon Borowski to teach the claimed arrangement of pixels. See generally Pet. 20–21. Because Petitioner fails to show sufficiently that the combination of Hall and Borowski teaches the arrangement of pixels recited by claim 1, we determine that Petitioner has not met its burden to show that claim 1 would have been obvious over Hall and Borowski.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - PTAB · Mar 19, 2024 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of claims 1–2, 4–9, 11–14, 16–17, and 19–25 on all petitioned grounds, finding a reasonable likelihood that claim 14 is obvious over Pacala, Johnson, Pardhan, and Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems. Less work experience may be compensated by a higher level of education or vice versa. Pet. 9 (citing Ex. 1003 ¶¶ 39–41). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art for the limited purpose of its Preliminary Response. Prelim. Resp. 10. We apply Petitioner’s proposed definition of the level of ordinary skill in the art in this decision. We determine that the undisputed level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001). We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner and Patent Owner each contend that no claim construction is necessary to resolve the patentability disputes in this case. Pet. 9; Prelim. Resp. 11. For purposes of this decision, given that no claim terms are in controversy on the current record, we determine that no express claim construction is necessary. 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 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“fins with Johnson’s rotor-stator structure would defeat Johnson’s objective of achieving compactness. Prelim. Resp. 23–24, 26–31. However, Petitioner contended that Pardhan’s fins would dissipate heat in the combination, thereby increasing the operating life of the LIDAR device. Pet. 53 (citing Ex. 1003 ¶ 252). Patent Owner’s argument does not address Petitioner’s evidence that the LIDAR device resulting from Petitioner’s combination would have increased operating life, even if some compactness is sacrificed. That there are simultaneous advantages and disadvantages in making the proposed combination does not necessarily negate the motivation to combine. See Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,515 - PTAB · Mar 19, 2024 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 21 and 23–34 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’405 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 21 and 23–34) of the ’405 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “had an undergraduate degree in mechanical or electrical engineering or physics and two to three years of experience in LiDAR design.” Pet. 12. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Id. Patent Owner “adopts Petitioner’s definition of a [person of ordinary skill in the art] as having an undergraduate degree in mechanical or electrical engineering or physics and two to three years of experience in LiDAR design” for purposes of its Preliminary Response. Prelim. Resp. 4. Accordingly, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions in a co-pending ITC case3 involving the ’405 patent; however, no “terms require construction to resolve the patentability dispute.” Pet. 12. Petitioner further argues that “Petitioner demonstrates how the prior art renders obvious the challenged claims under any proposed construction.” Id. Patent Owner argues that Petitioner “proposed the following construction for the term ‘aperture’” in the ITC case: “a small hole that defines a field of view for an individual pixel.” Prelim. Resp. 16 (citing Ex. 2001, 2). Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find on the current record that Petitioner has shown sufficiently that there is a motivation to combine Hall, Borowski, and Spector. We note that Patent Owner does not dispute, at this time, that there is a motivation to combine Hall and Borowski. We have reviewed Petitioner’s contentions with respect to the combination of Hall and Borowski and find it sufficient. We focus our analysis on combination of Hall and Spector. To begin with, we disagree with Patent Owner’s contentions that a person of ordinary skill would not have looked to Spector because Hall already solved the problem of cross-talk. See Prelim. Resp. 32–36. Although Patent Owner is correct that Hall offers some techniques to address the problem of cross-talk, Hall is clear that those methods are not the exclusive methods or universally solve the problem of cross-talk. For the first technique identified by Patent Owner, Hall states that “[i]n some embodiments, the delay time is set to be greater than the time of flight of the measurement pulse sequence to and from an object located at a maximum range of the LIDAR device. In this manner, there is no cross-talk among any of the sixteen multi-pulse illumination systems.” Ex. 1008, 9:13–17 (emphasis added). And for the second technique, Hall states In some other embodiments, measurement pulse may be emitted from one pulsed illumination system before a measurement pulse emitted from another pulsed illumination system has had time to return to the LIDAR device. In some of these embodiments, care is taken to ensure that there is sufficient spatial separation between the areas of the sur-rounding environment [interrogated] by each beam to avoid cross-talk.” Id. at 9:18–25 (emphasis added). Thus, Hall makes clear that these options for some embodiments, and that the technique works only if certain conditions are met. Thus, on this record, we do not agree that a person of ordinary skill would have been discouraged from looking at other techniques to address the cross-talk problem. Here, Hall discloses several, non-exclusive methods, that may address the cross-talk problem in certain circumstances, but we disagree with Patent Owner that would discourage a person of ordinary skill from looking to other methods of reducing cross-talk to improve Hall’s device. See Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). Patent Owner’s argument that Hall teaches away from the combination with Spector because Spector is a single-light-source device with a gimbal is also not persuasive. See Prelim. Resp. 37–39. Here, Petitioner proposes using the apertures used in Spector’s LIDAR device in Hall’s device. See Pet. 64–65. Petitioner does not propose incorporating Spector’s light source or its gimbal. Compare Pet. 65 (showing annotated version of Figure 1 of Spector showing aperture), with Prelim. Resp. 38 (showing annotated version of Figure 1 of Spector highlighting light source.). We disagree with Patent Owner that a person of ordinary skill in the art would ignore everything taught in Spector, which also discloses a LIDAR system, because Hall might criticize one component of Spector. We note that Hall does not appear to criticize Spector’s apertures or the components Petitioner seeks to rely on. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Indeed, “in many cases[,] a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Thus, we disagree that Hall teaches away from incorporating Spector’s apertures, as Patent Owner contends. Finally, on this record, we do not agree with Patent Owner that Spector teaches away from the combination. See Prelim. Resp. 41–47. We note that much of Patent Owner’s argument is based on its assertions of how the modified device would operate. See id. at 43–44. However, these assertions are supported only by attorney argument, and entitled to little weight. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Moreover, we note that the proposed combination seeks to improve Hall’s device, not Spector’s, so it is unclear why a person of ordinary skill would necessarily compare the performance of Spector’s device versus the combined device. But even if we ignore these problems, we note that “[a] reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Spector’s discussion of obtaining a “complete scan of the scene,” Ex. 1005, 5:12, does not necessarily “criticize, discredit, or otherwise discourage,” anything less than “a complete scan of the scene.” Indeed, “[i]t’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). At this stage, Patent Owner does not provide any evidence suggesting that Petitioner’s expert’s testimony is incorrect. See Ex. 1003 ¶¶ 185–195. Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine Hall and Spector.4 We note that this is only a preliminary finding and Patent Owner is free to develop further its various motivation to combine arguments by providing additional reasoning and evidence, and by cross examining Petitioner’s expert about his testimony.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,405 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01293 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 as anticipated by and obvious over Wu; claims 6, 7, 12, and 17 as obvious over Wu and Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering (or equivalent field) with 2–3 years of work experience in wireless communications.” Pet. 21 (citing Ex. 1003 ¶¶ 20–22). Patent Owner argues that one of ordinary skill in the art “would have an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00818 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institution of inter partes review of claims 1–19 (“the challenged claims”) of U.S. Patent No. 10,334,499 B2 (Ex. 1001, “the ’499 patent”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Ericsson filed a Preliminary Reply (Paper 9). We determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and therefore we instituted this proceeding on March 9, 2023, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”). We granted a request in IPR2023-00831 by AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC to be joined as a Petitioner in this proceeding. Paper 19. After a joint request of Patent Owner and Ericsson, we terminated the proceeding as to Ericsson, leaving AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (“Petitioner”) as the lead (and sole) petitioner in this proceeding. Papers 16, 17, 20.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1004. Thus issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1005.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units. As Petitioner argues, there does not appear to be any indication in the specification and other intrinsic evidence that “digital representation” should be given more than its ordinary meaning, or that an underlying construction of “radio resources” would not be applied to this claim term, which explicitly includes “radio resources.” Pet. Reply 9–10 (citing Ex. 1001, representation” in the specification of the ’499 patent). Our construction is further supported by the language of the claims, which requires that each “set of radio resources” is “for transmission at an antenna of the first remote unit.” Ex. 1001, 14:17–19, 14:22–24, 15:3–5, 15:8–10, 16:6–8, 16:11–13. With respect to the “digital representation” of “set[s] of radio resources,” the specification of the ’499 patent describes that in the downlink (base station to DRU antenna) path for data, RF signals received at the DAU from base station(s), are down-converted, digitized, and further processed resulting in “independently serialized, parallel data streams” that are delivered to DRUs. Ex. 1001, 4:63–5:12. Petitioner contends that this description of delivery of a digitized version of an RF signal to DRUs describes the sending/transmission of a digital representation of the radio. Pet. 9–10. While Patent Owner appears to argue that a “digital representation” of a radio resource would be only an “identifier” of, e.g., an RF carrier (PO Resp. 18), this does not appear to be supported by the specification or the cited testimony of Dr. Chrissan. We do not see a reason to relate “digital representation of . . . a set of radio resources” in the claims to the description in the ’499 patent specification of the remote configuration of DRU parameter settings via the DAU, including detecting or determining radio resources assigned to a DRU and configuring the DRU, turning on and off individual carriers transmitted and received by a DRU. PO Resp. 16–18 (citing Ex. 1001, 4:50–62, 6:31–44, 7:44–50, 12:15–39, 12:58–13:2). No cited portion of the specification describes these signals sent from a DAU to control a DRU as digital representations of a set of radio resources. While Patent Owner cites, in support, Dr. Chrissan’s declaration, Dr. Chrissan does” slip op. at 16
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499
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.