- Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.No claims unpatentablePTAB · Jul 21, 2026 · IPR2025-00190 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1, 3–11, 13, and 14 were not shown unpatentable because Dong did not disclose the claimed vertical wordline arrangement, and the proposed 3D NAND combination lacked support for motivation and reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“understanding that the claim term “from bottom to top” refers to the vertical arrangement of word lines in the memory portions from bottom to top and not from source end to drain end, as asserted by Petitioner. Inst. Dec. 17. In other words, the claim terms describing the first and second portions having word lines “from top to bottom” refer to the relative vertical location of the word lines within the memory portions and not to location of the word lines relative to the source or drain. Our construction is based on the plain and ordinary meaning of the express language of the independent claims, which states that the second memory portion is formed either above or below the first memory portion. The forming of one memory portion above or below another portion establishes a top and bottom in relation to those portions. For example, claim 5 is directed to a “program method of memory” that requires a second portion formed above the first portion. A second memory portion that is formed above a first memory portion is on top relative to the first portion. Similarly, claims 1 and 1 and 11, which recite a memory having a second portion formed below a first portion, establish that the second portion is on the bottom relative to the first portion. Thus, the claim language itself establishes the vertical locations of the memory portions relative to each other (e.g., a second memory portion that is above the first portion is on top, relative to the first portion). It follows that claim terms referring to the top and bottom of word lines within the memory portions also refer to relative vertical locations of the word lines within the memory portions. Thus, we understand the plain and ordinary meaning of claim” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“In our Decision, we treated the preambles of claims 5 and 11 as limiting, noting that these preambles provide antecedent basis for the word line limitations recited in the body of their respective claim. Dec. 14–15, 8. Neither party disputes that the preambles of claims 5 and 11 are limiting. See PO Resp. 34–35 (agreeing that the preambles are limiting); see generally Reply 1–6 (not disputing that the preambles are limiting). We maintain our construction of the preambles in this Decision.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we consider the level of ordinary skill at the time of filing. 35 U.S.C. § 103; see also Graham, 383 U.S. at 17 (discussing pre-AIA obviousness). Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had a had a bachelor’s degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) NAND memory devices (including issues relating to the operation, e.g., programming, of said devices), or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience). Pet. 22 (citing Ex. 1004 ¶¶ 40–42). Petitioner also asserts that a POSITA would have been aware of and generally knowledgeable about NAND memory’s structure and fabrication, its component parts, how it operates, and how it is controlled. Id. at 22–23 (citing Ex. 1004 ¶ 41). In the Institution Decision, we adopted the assessment offered by Petitioner, which Patent Owner did not contest. Inst. Dec. 13. Following institution, Patent Owner stated it does not dispute Petitioner’s definition of a POSITA. PO Resp. 9 (citing Khatri Dec. ¶¶ 42–47). Because Petitioner’s definition of the level of skill in the art appears consistent with the ’941 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 9
- Expert testimonyPatent owner expert creditedOther
“We disagree and find that Dong’s Figure 5a does not depict wordlines in a physical vertical orientation, but rather depicts voltage diagrams. We agree with Patent Owner’s argument, supported by persuasive testimony by Dr. Khatri, that a POSITA would have understood that Dong’s voltage charts (e.g., Fig. 5a) simply represent which voltages are applied to which word lines and do not depict the physical orientation of the wordlines. See, e.g., Ex. 2028 ¶ 171 (citing Ex. 1005 ¶ 20; Ex. 1009 ¶¶ 52–54). As Dr. Khatri explains, Dong Figures 5a–5h depict different examples of self-boosting modes showing voltages applied differently to the wordlines and are not intended to depict the physical orientation of these word lines. Ex. 2028 ¶ 171; see also Sur-reply 11–12 (citing Ex. 1005 ¶¶ 47, 65, 63–67; Ex. 2028 ¶¶ 177–186). We agree with Dr. Kahtri’s persuasive testimony that a POSITA would understand that Figures 5a–5h are illustrated vertically, but do not represent the actual physical arrangement of the word lines in memory, which are shown to be horizontal in Dong’s Figure 4. See, e.g., Ex. 2028 ¶ 172 (citing Ex. 1005 ¶¶ 20, 45, 47, 87).” slip op. at 24
Patent outcomesUS 11,568,941 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,568,941 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Dec 1, 2025 · IPR2025-01010 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–15 of the ’322 patent. Accordingly, we institute an inter partes review of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 10 (citing Ex. 1003 ¶¶ 61–63). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On the current record, we determine that the “modified embedded resource” may be a “link.” Both Petitioner and Patent Owner point to claim 13, which explicitly states that a modified embedded resource is a link. Because claim 13 depends from claim 1, claim 1 must be broad enough to encompass a modified embedded resource that is a link. Patent Owner also points to a statement in the ’322 patent that “[t]he embedded resource is a link.” Prelim. Resp. 18 (citing Ex. 1001, 4:26–31). Patent Owner argues that every embodiment of the ’322 patent “involves embedding the ‘modified embedded resource’ in another resource when it is returned to the client.” Paper 16, 2–3. Patent Owner cites to description in the ’322 patent of a “document” or a “page” returned to the requesting client. Id. (citing Ex. 1001, 4:42–48, 7:48–55). However, claim 15 does not return the modified embedded resource to the client, only the origin system. Claim 1 recites only that the “modified embedded resource” is returned to the client device with the content resource. Neither claim 1 nor claim 15 recite returning a document or a page containing the modified embedded resource, only the modified embedded resource itself. We acknowledge some tension with the adjective “embedded,” which Patent Owner argues requires that the embedded resource be embedded in something. Paper 16, 1–3. However, the clear description of an embedded patent, more strongly guides our preliminary construction.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are persuaded by Petitioner’s assertions for limitations [15pre]– [15a]. Dr. Mowry attests that Verna’s client browser sends a URL 28 to a content provider 22, which is then forwarded to broker 25, which selects the appropriate cache server to serve the content and returns a re-written URL to the content server that received the client request. Ex. 1003 ¶ 67 (citing Ex. 1005 ¶¶ 12, 26, 27, 37). On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API as acting as bridge establishing a connection between client and server. Ex. 2010 ¶ 50. Verma also meets Dr. Russ’s characterization of an API as “an interface that allows the client to communicate with an application executing on the server.” Ex. 2010 ¶ 50. Dr. Russ describers Verma’s broker as sending availability inquiries from the content provider (client) to servers 23 and 24 to “find out whether they currently store the requested movie file,” and provide that information back to the content provider (client). Id. ¶ 53. On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API acting as an interface that allows the client to provides availability information to the broker). Consequently, we determine that Petitioner has shown Verma to disclose limitation [15a] for purposes of institution on the current record.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,057,322 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentablePTAB · Nov 5, 2025 · IPR2024-00792 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–6 were not shown unpatentable because the asserted references did not establish the claimed bias voltages and pre-verify stage.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 5–6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’957 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Expert testimonyPatent owner expert creditedOther
“It is within our discretion to assign the appropriate weight to Dr. Przybylski’s testimony. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declaration and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). On this record, we decline to generally discount Dr. Przybylski’s based on Petitioner’s contentions. When assigning upon which the testimony is based. See PTAB Consolidated Trial Practice Guide 40–41 (Nov. 2019). In our analysis of the asserted grounds of unpatentability, we weigh Dr. Przybylski’s testimony accordingly.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record and the arguments raised by the parties, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“claim 1 would have been obvious over the combined teachings of Hongtao and Yu by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); see also 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”)). After considering the parties’ arguments and evidence of record, and weighing the testimony of Dr. Liu and Dr. Przybylski, we are not persuaded that Petitioner meets its burden of establishing, by a preponderance of the evidence, that Hongtao teaches or suggests applying a second bias voltage that is smaller than the first bias voltage in the verify stage as recited in limitation [1.d]. Hongtao is silent with respect to the magnitudes of the pre-conduction and conduction voltages. Hongtao teaches that “a pre-conduction voltage is applied to both the unselected word line and the selected word line to turn on the channels of the selected string and the unselected string.” Ex. 1005 ¶ 23. Hongtao then teaches that, in the reading phase, “[t]he gates of the unselected memory cells on the selected string are applied with a conduction voltage through the unselected word lines.” Id. ¶ 25. Hongtao, however, describes the magnitudes of the pre-conduction and conduction relative to each other. See id. ¶¶ 21–26. Petitioner and Dr. Liu point to Hongtao’s statement that “the greater the conduction voltage, the greater the read disturbance” to support its contention that the conduction voltage is smaller than the pre-conduction voltage, but that statement refers to the relationship between conduction voltage and the read interference it causes and does not compare the conduction voltage to the pre-conduction voltage. See Pet. 40 (citing Ex. 1005 ¶ 26); Ex. 1003 ¶ 120 (citing Ex. 1005 ¶ 26). We also find credible Dr. Przybylski’s testimony that Hongtao lacks the details needed to determine how the gate voltages develop over time, in particular the length of the pre-conduction period. See Ex. 2003 ¶ 96. Dr. Przybylski’s testimony is consistent with the ’957 patent’s teaching that when the pre-pulse time is long enough that the bias voltages are fully developed before the TSG transistor is switched off at the unselected memory cell string, hot carrier injection “may not be generated from the selected memory cell to the upper adjacent memory cell of the selected memory cell in the selected memory cell.” Ex. 1001, 11:60–12:1. In contrast, when the pre-pulse time is insufficient for the bias voltages to fully develop, hot carrier injection may be generated. Id. at 12:1–9. And we are not persuaded that Petitioner and Dr. Liu sufficiently rebut Dr. Przybylski’s persuasive testimony that casts doubt on Petitioner’s contention that Hongtao teaches a second bias voltage that is smaller than a first bias voltage as recited in limitation [1.d]. For example, Dr. Liu’s testimony that Hongtao teaches applying voltages on gate terminals does not adequately address Patent Owner’s argument and Dr. Przybylski’s testimony that Hongtao depicts target values for the word line voltages instead of the See Ex. 1027 ¶¶ 16–40. Neither Petitioner nor Dr. Liu adequately establish that Hongtao’s applied voltages are sufficiently developed such that the preconduction voltage actually is bigger than the conduction voltage. Petitioner’s argument that Hongtao teaches or discloses a second bias voltage that is smaller than the first bias voltage hinges on a POSITA’s interpretation of Hongtao’s Figure 2. In light of Hongtao’s dearth of details regarding the absolute or relative magnitudes of the pre-conduction and conduction voltages, and Dr. Przybylski’s unrebutted testimony that Hongtao does not provide sufficient information to ascertain the actual bias voltages that will be applied on the gate terminals of the memory cells over time, we are not persuaded that Petitioner carries its burden of establishing that Hongtao discloses limitation [1.d]. For these reasons, we determine that Petitioner does not establish by a preponderance of the evidence, that independent claim 1, and claims 2–6 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Hongtao and Yu.” slip op. at 15
Patent outcomesUS 11,468,957 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,468,957 - Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.No claims unpatentablePTAB · Sep 29, 2025 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Remand
On remand, the Board held claims 1–10 not shown unpatentable under the Sachs anticipation and obviousness grounds because Sachs did not disclose the required timer stopping, and the new theories were not considered.
RulingsRemand decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Whether Mr. Bates is a Person of Ordinary Skill in the Art In the Final Written Decision, we adopted Petitioner’s definition because “there does not appear to be a dispute that needs to be resolved.” FWD 8. Here, where Mr. Bates’ qualifications are challenged, we have reviewed the complete record including the parties’ arguments on remand and we find that Mr. Bates does not meet the requirements for a person of ordinary skill in the art according to Petitioner’s definition for level of ordinary skill in the art, which we adopted (see FWD 8). Notably, the panel adopted Petitioner’s definition of the level of ordinary skill in the Institution Decision (Paper 16, 8), and neither party challenged that determination during the trial, although Patent Owner did offer its own definition (PO Resp. 9). Mr. Bates has one degree: “a bachelor’s degree in Business Management.” Ex. 2001 ¶ 7. A degree in Business Management is not “a degree in electrical engineering or a similar discipline.” Pet. 35 (emphasis added). Accordingly, we disregard the testimony of Mr. Bates in rendering our findings and conclusions in this Decision. We note that, even if we did consider Mr. Bates’s testimony, the findings and conclusions rendered in this Decision would not change.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“cover for his lack of education.” Pet. Remand Br. 4. Patent Owner disagrees and argues, inter alia, that “Mr. Bates was a pioneer in the cellular telecommunications field with more than five decades of practical and teaching experience.” PO Remand Resp. 5 (citing Ex. 2001 ¶¶ 8–23) (emphasis omitted); see id. at 3–4, 6. Whether Mr. Bates is a Person of Ordinary Skill in the Art In the Final Written Decision, we adopted Petitioner’s definition because “there does not appear to be a dispute that needs to be resolved.” FWD 8. Here, where Mr. Bates’ qualifications are challenged, we have reviewed the complete record including the parties’ arguments on remand and we find that Mr. Bates does not meet the requirements for a person of ordinary skill in the art according to Petitioner’s definition for level of ordinary skill in the art, which we adopted (see FWD 8). Notably, the panel adopted Petitioner’s definition of the level of ordinary skill in the Institution Decision (Paper 16, 8), and neither party challenged that determination during the trial, although Patent Owner did offer its own definition (PO Resp. 9). Mr. Bates has one degree: “a bachelor’s degree in Business Management.” Ex. 2001 ¶ 7. A degree in Business Management is not “a degree in electrical engineering or a similar discipline.” Pet. 35 (emphasis added). Accordingly, we disregard the testimony of Mr. Bates in rendering our findings and conclusions in this Decision. We note that, even if we did consider Mr. Bates’s testimony, the findings and conclusions rendered in this Decision would not change.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“C. Claim Construction The Federal Circuit determined that “the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.” Sierra Wireless, 130 F.4th at 1022. We interpret the claims and analyze Petitioner’s unpatentability arguments under the Federal Circuit’s determination.” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner was on notice, when Patent Owner’s Response was filed at the latest, that claim 1 could be construed as unconditionally requiring both limitations 1[c] and 1[d]. Indeed, Petitioner contended that it had shown both limitations “in single references.” Pet. Reply 5. Petitioner now seeks to shift its unpatentability contentions for limitation 1[c] from Figure 5 of Sachs to Figures 6 and 7. Petitioner’s new reliance on Figures 6 and 7 of Sachs is “a meaningfully distinct contention” from its position in both the Petition and the Reply. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). We therefore find that Petitioner impermissibly presents new theories of unpatentability on remand. 3. Independent Claim 1 We decline to address Petitioner’s new theories of unpatentability proposed on remand concerning Sachs’s Figure 7. See Pet. Remand Br. 15– 20. Although Petitioner cites pages 59–61 of the Petition as discussing Figure 7 of Sachs (see Pet. Remand Br. 15), the cited discussion concerns dependent claims 5 and 10, not independent claims 1 and 8.” slip op. at 17
Patent outcomesUS 7,869,396 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,869,396 - Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Sep 4, 2025 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–3, 6–10, 14–18, and 22–24 are unpatentable; claims 4–5, 11–13, and 19–21 are not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We agree with Petitioner that the ’690 patent does not limit the term “probe” to channel assessment. Pet. Reply 2–4. Reviewing the intrinsic evidence, the “Technical Field” of the ’690 patent states that “some embodiments relate to channel assessment probes,” implying others do not. Ex. 1001, 1:13–14. The ’690 patent further states that “receiver determined probes may be used in a variety of applications” including to “discover hidden nodes” and “off-site network diagnosis.” Id. at 2:20–27. In addition, the ’690 patent states that probes may be used for “network maintenance procedures,” to “replicate a potential problem, reach or discover a distant or previously undetected node on the network, or assist with network admissions procedures.” Id. at 4:25–38. Turning to the claims of the ’690 patent, the evidence of record does not establish that the independent claims recite anything unique or specific to channel assessment (although their scope covers that purpose). Furthermore, dependent claim 7 of the ’690 patent recites that the “probe” is used to diagnose a network problem, and dependent claim 13 recites that the “probe” is used to identify a hidden node. Restricting the independent claims to probes used solely for channel assessment would be contradictory to these dependent claims. Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (construction of term in independent claims should not render dependent claims superfluous or lacking scope).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner that a “physical layer probe” is “a probe that relates to the physical layer.” The term does not appear per se in the specification of the ’960 patent, nor in the prosecution history, but only in claims 9, 17, and 19. However, the term “physical layer” is well-known and is the first layer in the Open Systems Interconnection (OSI) network model. See, e.g., Ex. 1021, 35–40, 69; Ex. 1002 ¶¶ 49–50. The physical layer is used to transmit digital bits over a network, and defines the timing, mechanical, and physical network characteristics required for transmitting the data bits. Hence, a “physical layer probe” is a probe that relates to the physical layer. We need not, and do not, construe the term further to resolve the parties’ dispute. See Realtime, Vivid Techs., supra. Having decided proper constructions for the disputed terms, we proceed in our analysis to consider the parties’ arguments concerning the challenge grounds. In the following sections, we apply the plain meaning of the claim terms, and as necessary, specify what the plain meanings are.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA8 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’690 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Hence, we determine that Petitioner has shown by preponderant evidence that the Ranging Request (“probe request”) message includes CID and SS MAC address and other parameters (“first plurality of parameters”) which at least specify the CID (“content payload of the probe”) and the SS MAC address (“second node”) of the Ranging Response.12 We thus proceed to consider Petitioner’s contentions for the remaining limitations of claim 1, which are undisputed, and determine that claim 1 is anticipated by IEEE-802.16.” slip op. at 29
Patent outcomesUS 8,284,690 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,284,690 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Sep 3, 2025 · IPR2024-00441 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–18 are unpatentable over Kamieniecki and Konstantinos; Petitioner did not show claims 1–18 unpatentable over Renken or Renken and Cholas because Renken is not prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in The Art Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication 1 Because the challenged claims have an effective filing date before the effective date of the AIA, we apply the pre-AIA version of 35 U.S.C. § 103. 2 US 2005/0114879 A1, published May 26, 2005 (Ex. 1009). 3 US 2010/0120386 A1, published May 13, 2010 (Ex. 1010). 4 US 2010/0303181 A1, published Dec. 2, 2010 (Ex. 1016). 5 US 2008/0313691 A1, published Dec. 18, 2008 (Ex. 1017). 6 US 8,649,421 B2, issued Feb. 11, 2014 (Ex. 1011). systems,” and that “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). “Patent Owner accepts the Petition’s [description of a person of ordinary skill] solely for purposes of responding to the Petition in this proceeding.” PO Resp. 11. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we apply Petitioner’s definition in this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses and will not assist in resolving the present controversy between the parties. 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)). C.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree that the record provides sufficient evidence that one of ordinary skill in the art would have found it advantageous to add a multi-channel receiver to improve monitoring, as Petitioner argues. Having the ability to monitor without waiting for idle or disturbing users would be a clear advantage.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We conclude that Patent Owner has not shown a sufficient nexus between the claimed invention and any product embodying the claimed invention that was successful, praised, or solved a long-felt need. Patent Owner identifies five elements allegedly required “[t]o implement MaxLinear’s Remote Spectrum Monitoring in CPE.” See PO Resp. 65. To support this, Patent Owner cites pages 5–7 of Exhibit 2009. See id.7 That exhibit, however, describes requirements for “Full Band Capture,” not MaxLinear’s “Remote Spectrum Monitoring.” To” slip op. at 31
Patent outcomesUS 8,792,008 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,792,008 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Kliger identifies the problems of splitter reflections causing inter- symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and separately over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are. Furthermore, the ’518 patent’s teachings are applicable to any network experiencing multipath reflections which degrade the ability to achieve high data rates regardless of the media over which those signals are transmitted. Id. at 4:19–32. Consequently, we determine the skill level as follows: A POSITA would have at least a bachelor’s degree in electrical engineering, computer engineering, or a related field and two to three years of experience working in broadband communication networks. Additional education could substitute for professional experience, or vice versa. For the foregoing reasons, our adopted skill level is consisted” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Kliger and Isaksson are analogous art to the ’518 patent because they are from the same field of endeavor as the patent—wired networking systems— and because they are reasonably pertinent to the problem at issue in the patent—overcoming wired-network signal impairments.” Pet. 27 (citing Ex. 1004 ¶¶ 76–80); Pet. Reply 3–12. Patent Owner disagrees with Petitioner’s contention that Isaksson is analogous art. PO Resp. 12–26; PO Sur-Reply 16–25. For the following reasons, we determine that Petitioner has shown by a preponderance of the evidence that Isaksson is analogous art to the ’518 patent because it is reasonably pertinent to the problems identified in the ’518 patent. The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable as obvious, principally over Amit and Jacobsen and, for additional claims, Amit, Jacobsen, and DSL-Book; the Board did not reach grounds 1 and 2.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. Ex. 1002 ¶¶ 17–18; Ex. 2007 ¶¶ 57–58.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Amit is restricted to “single frequency” modulation. PO Resp. 52–56. As Petitioner notes, Amit describes that its HCNM modem uses a channel (e.g., DOCSIS) containing two sub-channels for upstream and downstream signals. Pet. 24 (citing Ex. 1005, 15:18–28). This meets Patent Owner’s definition for multicarrier communications as multiple subcarriers to provide communications of a single channel. PO Sur-Reply 6. We further note that the claims do not recite “multicarrier communications” so the distinction Patent Owner attempts to draw is not supported by commensurate language in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in a claim cannot be relied upon for patentability). Furthermore, even if Amit were restricted to single carrier modulation, as Patent Owner argues, Petitioner relies on Jacobsen for its teaching of multicarrier modulation. Pet. 62–66; PO Resp. 52–56. In essence, Patent Owner attacks Amit individually and does not properly consider how a POSITA would have understood the combined teachings of Amit and Jacobsen. “Non-obviousness cannot be established by attacking references individually where the [challenge] is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” slip op. at 26
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249
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.