• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

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

    “Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,089,443
• Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.

  RulingsInstitution decision

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

    “institute 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 “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14

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

    “cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution denied
  PTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.

  RulingsInstitution decision

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

    “institute 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 “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24

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

    “presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32

  • Obviousness (§103) › Analogous artNot reached

    “b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• Ao Kaspersky Lab v. Open Text Inc.Institution denied
  PTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8

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

    “For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10

  § 102 anticipation
  Patents in suitUS 10,284,591
• Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.

  RulingsInstitution decision

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

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

  § 102 anticipationcites Phillips
  Patents in suitUS 9,031,278
• Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyInstitution denied
  PTAB · Feb 5, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented by the parties, we determine that Petitioner has not shown a reasonable likelihood of prevailing on at least 1 of the challenged claims. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s articulation of the level of ordinary skill in the art is supported by the Declaration of Dr. Hartup. Ex. 1003 ¶ 46. It also appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, it is not objected to by Patent Owner. We adopt Petitioner’s articulation of the level of ordinary skill in the art, but delete the qualifier “a minimum of,” to keep that level from being vague and extending to a range that corresponds to the skill level of an expert. Thus, we regard the level of ordinary skill as being at the level of a person with “a bachelor’s 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the challenged patent has an effective filing date after March 16, 2013 (Ex. 1001, Codes (22), (63)), the effective date of the applicable AIA provisions, we refer to the post-AIA versions of §§ 102 and 103. degree in electrical engineering, or its equivalent, and two years of experience in studying or designing battery charging systems.” B.” slip op. at 9

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

    “Petitioner has not proposed a specific construction for any term, and is satisfied with their ordinary and customary meanings under the Phillips standard. Pet. 7. For the term “output port,” however, Petitioner states: “Petitioner has recognized the apparent construction given that term by Patent Owner in related litigation, and analyzed the term under both that more expansive interpretation, and its ordinary and customary meaning.” Id. at 7 n.1. Patent Owner also has not proposed a construction for any term, including the term “output port,” and asserts that no express construction for any term is necessary. Prelim. Resp. 7–8. For purposes of this decision, there is no dispute between the parties that would require claim construction to resolve. C.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “The limitation refers to the action of the claimed microcontroller, which receives input signals from the vehicle isolation sensor and the reverse polarity sensor and provides an output signal to the power switch. Ex. 1001, 8:23–25. According to this limitation, if a signal indicates absence of a vehicle battery, or if a signal indicates improper polarity connection to the vehicle battery, the power switch cannot be turned on. Facially, in its broadest possible reading, the requirement might allow the switch to be governed by one condition, not necessarily both. Neither party has read the language that way. Petitioner has applied the language as meaning both conditions govern operation of the power switch. Pet. 1, 4, 15–16. Patent Owner’s argument is consistent with that reading. Prelim. Resp. 15–18, 21–25. We have no reason to disagree with that understanding of the claim language, in light of the Specification of the ’015 patent.4 See e.g., Ex. 1001, 4:32–38 (“A smart switch FET circuit 15 electrically switches the handheld battery booster lithium battery to the vehicle’s electric system only when the vehicle battery is determined by the MCU 1 to be present (in response to a detection signal provided by isolation sensor 12) and connected with the correct polarity (in response to a detection signal provided by reverse sensor 4 The most expansive reading permitted by the literal language and not precluded by an express disclaimer is the broadest possible interpretation not satisfying even the broadest reasonable interpretation standard. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). 10).”). Thus, the power switch can be turned on only in response to a signal indicating presence of a vehicle battery and a signal indicating proper polarity connection to that vehicle battery. Petitioner has not made a sufficient showing that that is true in Richardson.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,007,015
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• Adobe Systems Incorporated v. William GreciaInstitution denied
  PTAB · Jun 21, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show Venkataramu was a publicly accessible printed publication, defeating every obviousness ground for claims 1–26.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “We agree with Patent Owner. To determine a date on which Venkataramu was publicly accessible, we look to evidence of the SJSU library’s cataloging and indexing practices, as well as any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. Neither Petitioner nor Mr. Butler offers sufficient evidence that Venkataramu was sufficiently indexed or catalogued at SJSU for access. That the Internet Archive captured and archived a copy of Venkataramu does not mean, by itself, that Venkataramu was sufficiently indexed or catalogued at SJSU. Nor does it reveal anything about the search capabilities of the SJSU library website. Mr. Butler does not claim to have personal knowledge of the general library practices of the SJSU library, or the search capabilities of the SJSU library website. For example, he does not testify as to the procedures, if any, the university uses to index or catalog project reports, or the manner, if at all, in which project reports are indexed or cataloged (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU library website. Further, neither Petitioner nor Mr. Butler introduces any evidence that Venkataramu was actually disseminated to any interested skilled artisans prior to the earliest possible effective filing date for the ’555 patent. Additionally, Petitioner has not explained why making a copy of Venkataramu accessible on the Internet Archive constitutes publication of Venkataramu on the Internet Archive as of October 2, 2008. In that regard, we note that Mr. Butler’s Affidavit does not indicate that the archived files are searchable through a subject matter index or catalog.” slip op. at 11

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

    “In view of the foregoing, we determine that Petitioner has not shown sufficiently that Venkataramu was publicly accessible prior to the earliest possible effective filing date for the ’555 patent. Therefore, Petitioner has not shown that Venkataramu qualifies as a printed publication. Because each of Petitioner’s asserted grounds relies on Venkataramu, Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–26 would have been obvious over any of the asserted grounds. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’555 patent. V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 13

  § 102 anticipation
  Patents in suitUS 8,402,555
• Samsung Electronics Co., Ltd. v. Huawei Technologies Co., Ltd.Institution denied
  PTAB · Dec 4, 2017 · IPR2017-01465 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show Baldemair was entitled to its provisional's priority date, so it was not shown to be prior art for claims 3–5 and 9–11.

  RulingsInstitution decision

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

    “Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “To show that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional, Petitioner must show that the claims of Baldemair are supported by the Baldemair Provisional. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of priority to the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Recognizing this requirement (Pet. 18), Petitioner cites several passages from the Baldemair Provisional, and asserts that the cited passages “provide[] support for the relevant claims in Baldemair, such as claim 1.” Id. at 18–19.” slip op. at 5

  • BurdenDecided for patent owner

    “Baldemair Provisional may disclose the limitations recited in claim 1 of Baldemair, Petitioner does not explain how those cited portions disclose the claim limitations. As Patent Owner points out, claim 1 of Baldemair has several limitations, none of which Petitioner specifically discusses with respect to any of the cited passages from the Baldemair Provisional. Prelim. Resp. 21–22. Petitioner should not expect the Board to cull the evidence necessary to support Petitioner’s arguments. Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 8,885,587
• Nokia Solutions And Networks US LLC / Nokia Solutions And Networks OY v. Huawei Technologies Co. Ltd.Institution denied
  PTAB · Jul 26, 2017 · IPR2017-00592 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 8, 9, 11, 16, 17, and 19 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “’575 patent would have been obvious over TS 23.125 and Tdoc ’930. Pet. 66–70. For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on this asserted ground.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Based on the record before us, we are unpersuaded by Petitioner’s argument that the challenged claims of the ’575 patent are not entitled to the benefit of the filing date of the Chinese application. As Patent Owner points out, independent claims 1 and 16 do not require determining a charging method to be offline. Prelim. Resp. 14. Rather, the claims recite “determining a charging method” or “determine a charging method,” without specifying offline as a required charging method. Patent Owner points us to where the Chinese application discloses a CRF determining a charging method to be online, as discussed above. See, e.g., Ex. 1031, 19 (cited at Prelim. Resp. 14). We find that such disclosure sufficiently describes the disputed limitations “determining a charging method” and “determine a charging method.”” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Tdoc ’930 is a “temporary document” that contains 3GPP member “contributions for consideration by the Technical Specification Group or Working Group.” Ex. 1013; Ex. 1004 ¶ 17 (declaration testimony explaining that “Tdocs” refer to “temporary documents”). Petitioner asserts that Tdoc ’930 “was publicly available as early as May 23, 2004,” the date on which Petitioner relies as the prior art date. Pet. 33. Petitioner supports this assertion with the declaration testimony of both Dr. Min (Ex. 1003) and Balazs Bertenyi (Ex. 1004). See id. (citing Ex. 1003 ¶ 124; Ex. 1004 ¶ 37). According to Petitioner, Tdoc ’930 qualifies as prior art under 35 U.S.C. § 102(a)4 “because the ’575 Patent is not entitled to the priority date of the [] Chinese priority document.” Id. As discussed above, however, we find that the challenged claims are entitled to the benefit of the filing date of the Chinese application, namely, May 12, 2004. Accordingly, Tdoc ’930 does not qualify as prior art against the challenged claims of the ’575 patent under 35 U.S.C. § 102(a). 4 Because the application for the ’575 patent was filed before the enactment of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the pre-AIA version of 35 U.S.C. § 102(a) applies in this proceeding. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1– 3, 5, 8, 9, 11, 16, 17, and 19 would have been obvious over TS 23.125 and Tdoc ’930.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner argues that one of ordinary skill in the art would have found it obvious to combine TS 23.125 and the Tdoc list because, according to Dr. Min, “a POSITA would have followed the instructions explicitly provided by [the Tdoc list], namely include an OCS address.” Pet. 36; Ex. 1003 ¶ 131. We are not persuaded by Petitioner’s argument. Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining TS 23.125 and the Tdoc list to arrive at the claimed invention, namely a CRF providing a TPF with address information of a charging system. As to the case where the address information is provided to the TPF by another node (as opposed to being preconfigured in the TPF), we note Petitioner’s explanation that the CRF is the only node that would have provided the TPF with address information because the CRF and the charging system are the only nodes connected to the TPF, and the charging system would not have provided its own address to the TPF. See Pet. 54–55; Ex. 1003 ¶¶ 158–59. However, we find this explanation to be inconsistent with the teachings in TS 23.125 and the ’575 APA. For example, TS 23.125 teaches that “[a] TPF may be served by one or more CRF nodes,” and that “[t]he appropriate CRF is contacted based on UE identity information,” where “UE” refers to “User Equipment.” Ex. 1006, at 8, 16; see also id. at Fig. 7.1 (showing the UE communicating with the TPF). Similarly, the ’575 APA teaches that “the UE sends an Establish Bearer Service Request to the TPF.” Ex. 1001, 4:65–66. These teachings indicate that at least another node, namely the UE, is connected to the TPF. Accordingly, we find that these teachings also indicate that the address information of a charging system could have been provided by the CRF or the UE in the case where the address information is provided to the TPF by another node. As Patent Owner points out, neither Petitioner nor Dr. Min explains why a person of ordinary skill in the art would have combined TS 23.125 and the Tdoc list to arrive specifically at a CRF providing a TPF with address information of a charging system, rather than to arrive at a UE providing a TPF with the address information or at a TPF that is already preconfigured with the address information. See Prelim. Resp. 36 (“Neither Petitioner nor its declarant articulate a reasoning with rational underpinnings as to . . . why such modification would occur specifically to the CRF element of TS 23.125.”); id. at 37 (“the Petitioner had a burden to show why a POSITA in 2004 would have modified the ‘CRF’ element, in particular, of TS 23.125 to add the OCS address rather than modifying another element of TS 23.125”). Accordingly, on this record, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,798,575

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.