• Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentable
  PTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision

  Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22

  Patent outcomesUS 11,333,007 mixed
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,333,007
• Tesla, Inc. v. Iqar Inc.All claims unpatentable
  PTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7

  • Skill levelSkill level board ownDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28

  Patent outcomesUS 10,850,616 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,850,616
• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision

  Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. 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 5

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15

  Patent outcomesUS 11,373,058 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · Graham
  Patents in suitUS 11,373,058
• Tesla, Inc. v. Iqar Inc.Instituted
  PTAB · Sep 26, 2024 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Institution

  The Board instituted IPR on claims 1–16 under all asserted grounds, finding a reasonable likelihood that Koebler anticipates claims 1, 15, and 16 and that the asserted obviousness grounds succeed for at least some claims.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “require the Enumerated Current Conditions to be determined by analyzing data from the Enumerated Sensors, and it is this claimed invention for which the specification must provide written description support. 35 U.S.C. §§ 112(a), 120. Although, as discussed above, the claim requires only one Enumerated Sensor and one Enumerated Current Condition, it additionally requires that data from the sensor be analyzed to determine the current condition. Thus, to support the full scope of the claims, Koebler must disclose that each of the Enumerated Current Conditions is determined by analyzing data from one of the Enumerated Sensors. Although Petitioner asserts that Koebler does not provide written description support for ten of the Enumerated Sensors (see Pet. 10–11), Petitioner focuses its arguments on three of the current conditions (moisture, an amount of vibration, and traction) (see id. at 15–20), and we likewise focus our analysis on these three current conditions. Petitioner’s arguments for these three current conditions are substantially identical, including that Koebler does not teach or suggest using data from an Enumerated Sensor to determine each of the three current conditions. See id. at 15–19.” slip op. at 16

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther

    “Thus, at this preliminary stage of the proceeding and based on the present record, we determine that Petitioner has established a reasonable likelihood that Koebler does not provide written description support for the claims of the ’616 patent. For completeness, we note that we find Petitioner’s arguments that Koebler does not provide verbatim or synonymous disclosure of the words “moisture,” “vibration,” or “traction” (see, e.g., Pet. 15–16) unavailing, as there is no requirement for verbatim or synonymous disclosure in the prior application. PowerOasis, 522 F.3d at 1306; Purdue Pharma, 230 F.3d at 1323. Similarly, there is no requirement for “inherent disclosure” of the recited current conditions. See, e.g., Pet. 16–17. Rather, as explained above, the relevant inquiry is whether the application relied upon (here, Koebler) reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

    “Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,850,616
• LG Electronics, Inc. v. Constellation Designs, LLCNo claims unpatentable
  PTAB · Jul 10, 2024 · IPR2023-00319 · APJ Brent M Dougal · IPR · Final written decision

  Claims 5, 15, and 25 were not shown unpatentable because Barsoum supports their priority date, and neither Barsoum nor ATSC327 qualifies as prior art.

  RulingsFinal written decision

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

    “Petitioner does not sufficiently explain why claim 5 requires this type of optimization, or why this would be required in order for Barsoum to provide written description support for the claim. Claim 5 does not expressly require optimization of phase considerations and Petitioner does not argue for a claim construction that would include such a requirement.” slip op. at 17

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

    “(3) Conclusion – Written Description In view of the above, we find that either disclosure in Barsoum identified by Patent Owner satisfies the written description requirement. 2. 35 U.S.C. § 103 As noted previously, Petitioner argues that dependent claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327. Pet. 67–79. Having determined the Barsoum provides written description support for claims 5, 15, and 25, Barsoum cannot be prior art under 35 U.S.C. §102(a)(1) as asserted by Petitioner. Pet. 2; 35 U.S.C. § 102(a)(1) (requiring that “the claimed invention was patented . . . before the effective filing date of the claimed invention). Furthermore, having determined that the ’700 patent is entitled to an effective filing date of Barsoum ’777, which is June 5, 2008, the asserted March 2019 date of ATSC327 does not qualify it as prior art to the ’700 patent. Thus, the Petition does not establish by a preponderance of the evidence that claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327.” slip op. at 22

  • Adverse judgmentAdverse judgmentOther

    “1 Claims 2, 3, 12, 13, 22, and 23, though challenged by Petitioner, were disclaimed by Patent Owner after trial was instituted. Ex. 2024. 2 The Petitioner Sur-reply was authorized in view of our authorization for Patent Owner to file declarant testimony with the Patent Owner Sur-reply.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We also find that Dr. Caire’s statement of a “Ph.D.,” “and possibly some years of work after Ph.D.” is consistent with Petitioner’s statement that the level of skill includes “[s]uperior education” to “compensate for a deficiency in work experience.” The complexity of the evidence of record emphasizes the importance of “at least two years of experience . . . including the use of constellations in transmitting signals between devices” or “[s]uperior education” in the same area. We adopt Petitioner’s definition of the level of skill as discussed above.” slip op. at 9

  Patent outcomesUS 10,693,700 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,693,700
• College Products, Inc. v. Intirion CorporationInstituted
  PTAB · Apr 10, 2024 · PGR2024-00004 · APJ Scott A Daniels · PGR · Institution

  The Board instituted PGR on claims 1–24 and all petition grounds, finding it more likely than not that claims 1–3, 5–6, 8–11, 13–17, and 20–24 are obvious over Emma, Butt, and Smith.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4–5. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’746 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “level of smoke” Neither Patent Owner nor Petitioner expressly indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrase “level of smoke,” recited in claims 1, 15, and 22, “Patent Owner interprets ‘level of smoke’ as merely detecting smoke.” Pet. 14 (citing Ex. 1009, 6). Patent Owner argues that it “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. in light of the specification, we understand “level of smoke” as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’746 patent explains. Ex. 1001, 15:43–44, see also id. at 15:63–65 (The ’746 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may address this issue more directly in subsequent briefing. slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “POSITA to reasonably combine Emma with a smoke sensor reference.” Prelim. Resp. 44. We agree that Emma does not disclose a smoke sensor, but Petitioner has provided other prior art references, namely Butt and Smith, and presented several reasons, namely safety reasons, that a person of ordinary skill in the art would consider adding a smoke detector from Butt and Smith to Emma’s microwave oven. Pet. 24, 74–75. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015, 1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added). each directed towards shutting down a component of the device in response to a sensor output indicative of an unwanted condition.” Id. ¶ 127. Dr. Horenstein testifies further that a person of ordinary skill in the art “would have combined the elements as disclosed by known methods for the purposes of modifying Emma’s microwave / refrigerator combination to include Smith’s smoke sensor to be operatively connected with its cooking area and to include Butt’s smoke sensor and reset functionality.” Id. ¶ 126. Dr. Horenstein explains that inclusion of Butt’s reset functionality with Smith’s smoke sensor operatively connected with the cooking area into Emma would result in such elements merely performing the same function as they do separately, i.e., sensing smoke to withdraw electrical power from an electrical cooking appliance and then re-enabling the electrical cooking appliance. Id. Moreover, Dr. Horenstein testifies that the prior art, for example, Butt, specifically recognized the need to solve the problem of fires in the home started by cooking appliances. Id. ¶ 128 (citing Ex. 1015, 1:22–44). Butt explains, that “[h]ome fires are a serious problem in the United States. The National Fire Protection Association reports that between the years 1999- 2002, for example, there were 114,000 reported home fires associated with cooking alone.” Ex. 1015, 122–25. Similarly, Smith expressly teaches “[a] method and apparatus for anticipating the occurrence of a fire in the cooking cavity of a microwave oven.” Ex. 1014, Abstract.” slip op. at 36

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,674,746
• College Products, Inc. v. Intirion CorporationInstituted
  PTAB · Apr 10, 2024 · PGR2024-00003 · APJ Scott A Daniels · PGR · Institution

  Instituted PGR on claims 1–28 and all petition grounds; the Board found a reasonable likelihood that claims 1, 13, 15, 20, 22, and 24–25 are obvious over Emma, Butt, and Smith.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. Pet. 14 (citing Ex. 1002 ¶ 50; Ex. 1023 ¶ 6). Patent Owner provides a similar level of ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’745 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “level of smoke” Neither Patent Owner nor Petitioner indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrases “level of smoke” and “amount of smoke,” recited in claims 1, 15, and 24, it has “applie[d] what it understands Patent Owner contends is the meaning of this term in this Petition[,] and shows below the claims are invalid under Patent Owner’s construction.” Pet. 13–14 (citing Ex. 1009, 6). Patent Owner argues that it has “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. For purposes of this Decision, reading the plain language of the claims in light of the specification, we understand “level of smoke,” or amount of smoke, in the claims generally as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’745 patent explains. Ex. 1001, 15:48–49, see also id. at 16:1–2 (The ’745 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may expressly address this issue more directly in subsequent briefing. slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “from Butt and Smith to Emma’s microwave oven. Pet. 24. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015,1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added).” slip op. at 38

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,674,745
• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Instituted
  PTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution

  Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. 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 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR
  Patents in suitUS 11,373,058
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Jul 18, 2023 · IPR2023-00320 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6–7, 16–17, or 27–28 were unpatentable; disclaimed claims were excluded.

  RulingsInstitution decision

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

    “Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77. For these reasons, we determine that Petitioner has not shown that claims 6, 16, and 27 lack written description support in Barsoum. Petitioner does not assert that claims 7, 17, and 28 lack written description support in Barsoum for any reason separate than provided by its assertions against parent claims 6, 16, and 27. Therefore, Petitioner has not shown a lack of written description in claims 7, 17, and 28.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “unequally spaced symbol constellations to a second group of unequally space[d] symbol constellations when the two groups are operated at the same SNR.” Pet. 15 (emphasis omitted). Petitioner argues that Barsoum “only describes determining a relative relationship between a geometrically shaped (i.e., unequally spaced) constellation and a constellation optimized for dmin.” Id. (citing Ex. 1027, 6:14–20, 2:56–63; Ex. 1003 ¶ 86). Petitioner points to a statement in Barsoum as “specifying that not all geometrically shaped constellations have a greater capacity than that of a constellation maximized for dmin.” Id. at 17 (citing Ex. 1027, 6:13–22). Petitioner asserts that Barsoum’s non-uniform constellations are capable of providing such greater parallel decoding capacity only after having been optimized for that purpose. Id. at 19 (citing Ex. 1027, 6:13–22, Ex. 1003 ¶ 92). Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77.” slip op. at 8

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

    “16–17, and 27–28 are obvious over the combination of Barsoum and ATSC327. Pet. 26. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21 upon which the challenged claims depend. Pet. 39–71, 96–98, 101–102. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See Prelim. Resp. As we have determined that Barsoum is not prior art to claims 6, 7, 16, 17, 27, and 28, the Petition does not establish a reasonable likelihood that those claims are obvious over the combination of Barsoum and ATSC327.” slip op. at 9

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,019,509
• LG Electronics, Inc. v. Constellation Designs, LLCInstituted
  PTAB · Jul 12, 2023 · IPR2023-00319 · APJ Brent M Dougal · IPR · Institution

  The Board instituted IPR on claims 2, 3, 5, 12, 13, 15, 22, 23, and 25 because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in an academic area emphasizing electrical engineering or a similar discipline, and at least two years of experience in the field working with, teaching, or researching communication systems including the use of con-stellations in transmitting signals between devices. [Ex.]1003, ¶[93]. Superior education could compensate for a deficiency in work experience, and vice-versa. Id. Pet. 28. Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 3. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner asserts that no terms require express construction. Pet. 28. Patent Owner does not argue that terms in the challenged claims should be construed. We determine that no terms need to be construed at this time. 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 inadequateWritten description adequateMixed

    “Under the present record, we determine that Petitioner has satisfied its burden with respect to a lack of written description support for at least some of the claims. In particular, each of claims 3, 13, and 23 require QAM-16, QAM-64, QAM-256, and QAM-1024 constellations, and the beginning end points of the code rate ranges appear to have been selected for different reasons, without any discussion or support that would apply across the board. For example, Patent Owner argues that for the QAM-16 and QAM-64 constellations the first identified code rate that covers an unequally spaced constellation is important because that was “the object of the invention” and thus establishes the beginning end point. Id. at 46–47, 49–50. However, Patent Owner provides no reason why in the QAM-256 constellation the claimed range covers equally and unequally spaced constellations. See id. at 52 (locus plot of Figure 14c). Rather, Patent Owner merely asserts that the claimed range is “coextensive with the values in [the table of] Figure 15b.” Id. at 51. For the QAM-1024 constellations Patent Owner also asserts that the claimed range is “coextensive with the values in [the table of] Figure 17b,” and again makes no mention of unequally spaced constellations. Id. at 53. Not only is Patent Owner’s logic applied inconsistently across the different types of QAM constellations, but this also results in inconsistency in the logic behind claims 3, 13, and 23 which require all of the different types of QAM constellations. Thus, we preliminarily determine that Petitioner has shown that a person of skill in the art would not understand that the patentee had possession of the claimed invention of claims 3, 13, and 23 at the time of the application, as there does not appear to be a way in Barsoum for determining how to select the beginning end points of the code rate ranges. See Pet. 3 (citing Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005)). Claims 2, 12, and 22 each only require a QAM-16 constellation and do not require the other QAM constellation types. Thus, these claims are not internally inconsistent in how they select the beginning end point of the code rate range. We determine, in view of the current record, the written description support for these claims is a close issue, as is the question of whether the disclosed locus plots, without more, are sufficient to disclose a range, rather than just specific points. As we have determined that claims 3, 13, and 23 have been shown preliminarily to lack written description support, we reserve these questions for trial.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “12, 13, 22, and 23 are obvious over the combination of Barsoum and ATSC322. Pet. 28–67. The Petition argues that dependent claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327. Id. at 67– 79. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See generally, Prelim. Resp. We note that it would seem inconsistent for Patent Owner to argue that Barsoum has written description support for the claims and yet does not teach a feature of the claims. At the same time, Patent Owner also does not address ATSC322 or ATSC327, or Petitioner’s reasons to combine the references. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21, upon which the challenged claims depend. Pet. 39–51, 75. Concerning claims 2, 3, 12, 13, 22, and 23 the Petition relies on ATSC322 for teaching QAM-16, QAM-64, QAM-256, and QAM-1024 constellations with a code rate of 7/15 which is within the claimed ranges for each of the constellations. See e.g., id. at 54 (reproducing Ex. 1023, Tables 6.12 and 6.13 at 30–31 which show all four constellations with a code rate of 7/15). Petitioner also provides a number of reasons why one of skill in the art would look to ATSC322, which is a technical standard, for combination with Barsoum. Id. at 37–39. After review, we determine that the Petition preliminarily establishes a reasonable likelihood that claims 3, 13, and 23 are obvious over the combination of Barsoum and ATSC322. We also determine that if Barsoum is prior art to claims 2, 12, and 22, the Petition preliminarily establishes a reasonable likelihood that claims 2, 12, and 22 are obvious over the combination of Barsoum and ATSC322.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,693,700

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.