- Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- BurdenUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Even if Patent Owner is correct that Atsuta is an FDD system, that argument does not show a fatal flaw in Petitioner’s obviousness case. Petitioner is not, as Patent Owner implies, proposing to change Atsuta’s purportedly FDD system to a TDD system or to bodily incorporate Atsuta’s entire system into Vornefeld’s system or to make a system that attempts to use both FDD and TDD together. Rather, Petitioner is applying Atsuta’s frame structure—the organization, in the same portion of the same frame, of timeslots for users located in different sections—in Vornefeld’s downlink portion of a frame in a TDD system. See, e.g., Pet. 38 (“the combination would use one known frame structure in place of another—specifically, Atsuta’s design that includes transmissions to multiple sectors in one frame.”). Patent Owner does not persuasively argue that Atsuta’s teachings in that regard are uniquely applicable to an uplink portion in a FDD system such that they are not also applicable to Vornefeld’s system. Rather, Patent Owner, in response to Petitioner’s contention that Atsuta’s frames are compatible with a TDD frame, argues that, “[b]ecause Atsuta provides little explanation as to how its invention could be modified to apply to downlink transmissions at all, let alone in addition to uplink, a POSA would not have applied Atsuta’s invention to downlink transmissions in a TDD frame as Petitioner alleges without support.” PO Resp. 44 (citing Ex. 2028 ¶ 109). That is an argument that there is no reason to combine the references’ teachings because Atsuta lacks an explicit teaching to combine them. It is not an argument that Atsuta’s frame structure cannot work in Vornefeld’s system and therefore the teachings cannot be combined. Additionally, Patent Owner’s requirement of an explicit teaching to combine in the references themselves has been rejected. KSR Int’l Co., 550 U.S. at 415; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).” slip op. at 36
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00978 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“in Atsuta are comprised of different timeslots reserved for data transmission (Ex. 1005, 6:35-58), just as a TDD frame is.” Ex. 1002 ¶ 105 (cited at Pet. 32 for the “compatible” proposition); see also id. ¶ 94 (“Vornefeld’s and Atsuta’s frame structures are consistent with each other. Both are directed to TDMA frame structured transmissions between a base station and subscribers.”). Dr. Almeroth also provided credible testimony in support of Petitioner’s contention (Pet. 28–29) that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings. See Ex. 1002 ¶¶ 95–97; see, e.g., id. ¶ 96 (“A POSA would readily understand that combining Atsuta with Vornefeld would have been straightforward. Atsuta’s method for allocating time slots to subscribers in different sectors within a single TDMA frame matches Vornefeld’s MAC protocol, which allows transmission to a subscriber with the ‘granularity of a single time slot.’” (citing Ex. 1004, 54)). Dr. Almeroth further testifies that certain cited disclosures in Atsuta “is all the information a POSA would need to determine that it would be obvious that a single frame in Vornefeld could include downlink transmissions to different sectors,” and “[t]hat would be true regardless of Atsuta’s duplexing method (e.g., FDD or TDD).” Ex. 1025 ¶ 22 (citations omitted). Dr. Almeroth additionally opines that “a POSA would understand that Atsuta’s description of a TDMA frame would indicate to a POSA a methodology that would incorporate one or compatible with a TDD frame.” Pet. 32; see also id. at 27–29 (contentions regarding a reasonable likelihood of success in making the proposed combination). In the Response, Patent Owner argues that Petitioner’s compatibility contention is incorrect. PO Resp. 44. We find that Petitioner’s subsequent argument and accompanying evidence is an appropriate reply to Patent Owner’s argument of incompatibility.” slip op. at 38
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - PTAB · Nov 26, 2024 · IPR2024-00936 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 5, 8, 9, 11–19, 23, 26, 27, and 29–36 are obvious over Tayloe, TI Datasheet, and Macnally.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, on the present record at this stage of the proceeding and for the reasons discussed above, we find that Petitioner has shown a reasonable likelihood of establishing that one of ordinary skill in the art would have been motivated to combine the teachings of Tayloe, TI Datasheet, and Macnally with a reasonable expectation of success. Patent Owner is invited to elaborate further on its positions in future briefing with potential expert support.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design.” Pet. 6 (citing Ex. 1003 ¶¶ 68–71). Petitioner further proposes that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Id. Patent Owner does not take a position, in the Preliminary Response, on the level of ordinary skill in the art. See generally Prelim. Resp. On the present record at this stage of the proceeding, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’528 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“their plain and ordinary meaning, with one exception. Pet. 3. Specifically, Petitioner asserts “storage element” or “energy storage element” are recited “interchangeably” in the claims and should each be construed to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal,” which Petitioner notes was “determined by the Board and affirmed by the [U.S. Court of Appeals for the] Federal Circuit.” Id. (citing ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976 (Fed. Cir. 2023) (holding “ParkerVision acted as its own lexicographer to define the term ‘storage element’” and “the Board’s construction of ‘storage element’ [(quoted above)] correctly tracks the lexicography provided by [ParkerVision]”) (citing U.S. Patent No. 6,061,551 (“the ’551 patent”), 66:55–67)). Petitioner contends that, like U.S. Patent No. 7,110,444 that was at issue in ParkerVision v. Vidal, the ’528 patent also incorporates the ’551 patent by reference. Pet. 4 (citing Ex. 1001, 1:30–34). And Petitioner notes that the ’528 patent “includes an identical disclosure to that deemed dispositive from the incorporated by reference ’551 patent.” Id. (citing Ex. 1001, 73:9–22 (which Petitioner contends defines “storage module”)). Further, Petitioner asserts “[n]o intrinsic evidence demands a different construction” because, even though claim 1 recites “system,” “energy,” and “transfer,” it does so “in isolation” and “does not recite ‘energy transfer system,’ let alone restrict the claimed ‘storage element’ to any energy transfer system.” Id. at 5 (also contending the file history of the ’528 patent does not support a different construction). Petitioner also contends “the proposed combinations teach the claimed ‘storage element’ or ‘energy storage element,’ even including the alleged condition of ‘low impedance load’ that purportedly ‘goes to the heart of what makes an element, a “storage” element.’” Id. Patent Owner does not take a position on claim construction in the Preliminary Response. See generally Prelim. Resp. On the present record at this stage of the proceeding, we agree with Petitioner, for the reasons discussed above, that “storage element” and “energy storage element” are used interchangeably in the claims and should be construed consistently with our prior construction of “storage element,” which, as noted above, was affirmed by the Federal Circuit, to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.” We need not construe any other claim terms expressly because there is no present controversy as to the meaning of any other claim terms in this proceeding. Realtime Data, 912 F.3d at 1375.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,528 - PTAB · Nov 26, 2024 · IPR2024-00935 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 over all three obviousness grounds, finding a reasonable likelihood of success on the Tayloe and TI Datasheet ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Summary as to Claim 14 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Tayloe and TI Datasheet teaches each of the elements of claim 14 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing. 3. Objective Indicia of Nonobviousness In the record presently before us, neither Petitioner nor Patent Owner has presented any evidence of objective indicia of nonobviousness. 4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Tayloe and TI Datasheet would have rendered the subject matter of claim 14 of the ’177 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and on the present record, we need not construe the term expressly because, for the reasons discussed below, we find that Petitioner has established a reasonable likelihood of showing that claim 14 would have been obvious to one of ordinary skill in the art under each construction, and because there is no present controversy as to the meaning of the term in this proceeding. 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 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“A datasheet is a well-known resource for learning detailed information of the multiplexer/demultiplexer, and a [person of ordinary skill in the art] would have been motivated to consult the TI Datasheet for a more complete understanding of Tayloe’s express teachings of the SN74CBT3253 demultiplexer, the only matching multiplexer available at the time. [Ex. 1023; Ex. 1003] ¶¶ 100–109; see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1374–75 (Fed. Cir. 2013) (obvious to combine two prior art references where one reference “refers expressly” to the other). When viewing the detailed diagram of the SN74CBT3253 demultiplexer, a [person of ordinary skill in the art] would have been motivated to apply four of the switches because the architecture of one switch on the demultiplexer is analogous to one of the four switching paths of Tayloe’s commutating switch 38. [Ex. 1003 ¶¶] 100–109. Thus, a [person of ordinary skill in the art] would have thought to implement the multiplexer switches from TI Datasheet in an analogous manner “by simple substitution of one known element for another.” Pet. 23–24 (citing Ex. 1003 ¶¶ 100–109; KSR, 550 U.S. at 401).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,865,177 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
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) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. 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 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “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). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00900 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–11 because the petition did not show that G.984.3 and Khermosh teach or suggest the claimed parameter sets determined according to link quality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the arguments of the parties and the evidence of record, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) pertinent to the ’359 Patent would have had at least a bachelor’s degree in electrical engineering, computer engineering, or similar discipline and had at least two years of experience with optical communications and networks. Ex. 1003, ¶ 22. A person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background. Id. Pet. 10. Patent Owner does not dispute Petitioner’s contention and presents a near-identical description of a POSITA. Prelim. Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record may also reflect the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’359 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he [claim] terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art under Phillips.” Pet. 8. Patent Owner agrees. Prelim. Resp. 9. No need exists to expressly construe any claim terms to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “[t]he values in this message, except for P1 and P2, are selected according to OLT parameters and preferences” and that P1 and P2 (length of preamble bits) are chosen by the OLT in order to ensure the total length of the burst overhead meets certain preset length restrictions. Id. at 32; see also Ex. 1005, 110. These notes confirm Petitioner’s acknowledgement that the parameters in this table are not determined based on link quality. Id.; see also id. at 35, 39. Thus, the upstream burst overhead parameters in the table in G.984.3, reproduced above, are not determined by the OLT “according to different levels of link quality” as this limitation requires.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,934,359 - PTAB · Nov 21, 2024 · IPR2024-00857 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on claims 1–19, with trial authorized on all petition grounds, based on a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having “a Bachelor’s Degree in electrical or computer engineering, computer science, or a similar field with two or more years of work experience with low-power connected devices.” Pet. 6 (citing Ex. 1003, Wolfe Decl. ¶ 29). Petitioner further states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes if its Preliminary Response, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim Resp. 7–8. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of a person of ordinary skill appears consistent with the subject matter of the ’216 patent and the references, we apply Petitioner’s standard for purposes of this Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 7; Prelim. Resp. 8. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1, 2, 5–8, 11–15, 18, 19 as obvious over Nagata and the knowledge of a person of ordinarily skill in the art; Claims 1, 2, 5–8, 11–15, 18, and 19 as obvious over Nagata in view of Hashiguchi; and or Nagata in view of Hashiguchi and Thubert. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“short intervals of time and communicates at a rapid interval (e.g.,150 msec every 4 sec). Id. at 55 (citing Ex. 1006 ¶¶ 70, 127–128, 138–139; Ex. 1003, Wolfe Decl. ¶ 158). Petitioner further notes that, although both Nagata and Hashiguchi transmit beacon signals synchronized to the awake modes of the labels to indicate the presence of information from an access point at scheduled, repetitive times, Nagata and Hashiguchi operate a little differently. Id. at 56. In particular, Nagata transmits a beacon signal synchronized to the electronic label wake-up time once every 60 seconds and varies the duration of the label’s awake mode (e.g., 30 seconds when the beacon indicates information to be transmitted is present); but Hashiguchi transmits a beacon signal synchronized with the electronic label’s awake time ratio, communicating beacons that correspond to the wake-up frequency, where the label listens for information for 150 msec in either a fast command mode (every 4 seconds or 15 times per minute) or a normal command mode (every 20 seconds or 3 times per minute). Id. at 56–57, 59– 60. Petitioner emphasizes that this feature allows Hashiguchi to improve its responsiveness, while reducing battery power drain, providing a reason for an ordinarily skilled artisan to combine th teachings of the references. Id. at 56–58. Noting that, like Nagata’s beacon signals, Hashiguchi’s beacon signals are sent at synchronized and prescribed time intervals in a manner that is indistinguishable from Nagata, Patent Owner argues that Petitioner fails to cure the defects of Nagata concerning the claimed fast wake-up instruction. Prelim. Resp. 23–24. As discussed above, the claim limitations do not exclude synchronous systems that transmit beacons signals or enter the fast and normal wake-up our analysis of Nagata (see Section IX.B herein), we determine that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Nagata and Hashiguchi and that their combined teachings would have disclosed or suggested all the limitations of the independent claims 1, 7, and 14 and their corresponding dependent claims to such an ordinarily skilled artisan.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,540,216 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01164 · APJ James P Calve · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–7 and 10–20 over Morris and Ray, and claims 8, 9, and 18 over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’375 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 27 n.8. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Patent Owner asserts that the claim term “exercise use data” needs to be construed to resolve the issues raised by Petitioner. PO Resp. 4. Patent Owner asserts that exercise use data is “data that would represent an amount of exercise of the user.” Id.; Ex. 2004 ¶ 32. Petitioner disagreed with this proposed construction in its briefing (Pet. Reply 1–5) but adopted it during the oral hearing (Tr. 14:12–15:17). The parties also agree that “exercise use data” includes time, distance, and calories of a user exercising on an exercise apparatus. PO Resp. 4–5, 14; Pet. Reply 3–4. For purposes of this proceeding, we apply Patent Owner’s proposed construction. For the reasons explained below, we determine that Petitioner has shown that the challenged claims are unpatentable even under Patent Owner’s narrower construction. As a result, we do not need to construe this claim term further.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner does not dispute Petitioner’s contentions. See PO Resp. We find that Petitioner has established that a skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and would have had a reasonable expectation of success. See Pet. 16–19, 27–28; Ex. 1002 ¶¶ 137–147, 161–163; Ex. 1004, 5:27–29, 7:11–22, 9:55–57; Paper 8 (Scheduling Order), 9 (cautioning Patent Owner that any arguments not raised in the response may be deemed waived).” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 45–52), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosures. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim as discussed above. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 29
Patent outcomesUS 10,796,375 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,796,375 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray; the Board did not reach the alternative Ray–AAPA and Yi grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’340 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but we agree with Petitioner that these differences are immaterial to this proceeding. See Pet. Reply 29 n.12. Moreover, our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4. According to Patent Owner, the Specification of the ’340 patent defines this term. Id. at 4–5 (citing Ex. 1001,6 1:43–46, 6:33–34, claims 4, 5, 17; Ex. 2004 ¶ 33). In its briefing, Petitioner disagrees with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 1–2; see id. at 1–5 (further contesting Patent Owner’s proposed construction). However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the Challenged Claims are unpatentable even under Patent Owner’s narrower construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit 8 By not challenging Petitioner’s contentions as to motivation to combine and reasonable expectation of success, we also find that Patent Owner has waived any argument contesting these contentions. See Paper 8 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed for the reasons explained by Petitioner, as set forth above.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“are contradictory and we also disagree with Patent Owner that Ray teaches away from “maintain[ing] communication between the exercise apparatus and the remote location while the user is determined by the controller not to be engaged with the operating member” as recited in claim 7. On the former point, we agree with Petitioner that Patent Owner “improperly equates generation and reporting of exercise use data with maintaining a connection with a remote location.” See Pet. Reply 20. Petitioner previously asserted that generation and reporting of the data would stop when Ray does not detect a user, but this does not mean that the connection would also be stopped. On the latter point, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner fails to point to anything in Ray that discourages or would otherwise lead one of ordinary skill in the art away from maintaining a connection with a remote location when exercise use data is not reported at that precise moment. Rather, Petitioner provides a reason with rational underpinning as to why one of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to maintain the connection—“to avoid delays in trying to re-establish the connection once the user had come back.” Pet. 39. That position is supported by the testimony of Mr. Rawls. Ex. 1002 ¶ 186.” slip op. at 53
Patent outcomesUS 11,227,340 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340
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.