- Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Oct 6, 2025 · IPR2024-00432 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 8, 9, 11–13, 18, and 19 as anticipated or obvious over Zhang; the remaining claims as obvious over the listed combinations.
RulingsFinal written decision- Expert testimonyOther
“and digital selector 240 disclosed by Zhang is “digital circuitry,” which is configured to receive a plurality of frequencies comprising a plurality of desired/undesired television channels from ADC 220 and to output the desired television channels to demodulators 250 as a digital datastream. Tr. 71:14–17 (PO Counsel: “There is no dispute that in both Zhang and the patent, an RF signal that has both desired and undesired channel comes in and what’s sent to demodulators are desired channels. Nobody is disputing that.”), 134:3–5 (PO Counsel: “The issue is not whether the black box 230- plus-240 is the digital circuitry. It is. The issue is not whether or not that overall circuitry selects channels. At some level, it does.”). In other words, Zhang teaches digital circuitry that is (1) capable of receiving a plurality of frequencies including desired/undesired television channels and (2) capable of distinguishing between the desired/undesired channels to output the desired television channels to a demodulator. We find these uncontested facts to be highly probative of Petitioner’s contention that, to a skilled artisan, Zhang suggests that its digital circuitry is capable of selecting the desired television channels from a digitized plurality of frequencies that include both desired/undesired television channels. This is because Zhang’s digital circuitry is able to take what is input originally as a digitized plurality of frequencies having both desired/undesired television channels and, using those frequencies, pick out the desired television channels that are subsequently output to a demodulator. Zhang teaches that “because only the selected channels are later demodulated” the disclosed digital circuitry is “much faster than traditional analog channel switching through RF tuners” and it “dissipates less heat because fewer resources are required when demodulating only the selected RF channels.” Ex. 1013 ¶ 28 (emphasis added).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ordinary and customary meaning to a POSITA.” Pet. 21. Although Petitioner proposes corresponding structure for the term “digital circuitry” recited in claim 1, it does so only “[t]o the extent” that term “is construed to be a means-plus-function term under 35 U.S.C. 112, paragraph 6.” Id. at 22. But Petitioner does not argue or suggest that “digital circuitry” should be construed as a means-plus-function term; nor does Petitioner make an argument to overcome the presumption that 35 U.S.C. § 112, paragraph 6, does not apply. See id. Patent Owner does not address claim construction. See generally PO Resp. Because neither party actually argues “digital circuitry” is a means-plus-function term, the presumption holds and we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 9,210,362 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 6, 2025 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10, 12, 13, 19, and 20 on all petition grounds after finding a reasonable likelihood that claim 1 was obvious over Douglas and Mark.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under § 103 “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that experience could substitute for a degree, and vice versa. Pet. 3 (citing Ex. 1003 ¶¶ 19–21); Prelim. Resp. 9. The parties’ proposed levels of ordinary skill are substantially similar. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposal for this decision. Only Petitioner’s proposed level is supported by testimonial evidence on the preliminary record, and it appears to be consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Therefore, we adopt Petitioner’s proposal for this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION B. In an IPR, we construe a patent claim “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).” 37 C.F.R. § 42.100(b). This generally includes “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.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; Prelim. Resp. 9. However, the parties’ positions depend on interpreting the claim language in a particular way, and we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we find Petitioner’s arguments persuasive and disagree with Patent Owner. Patent Owner appears to equate a “fabrication profile” with a toolpath description, but nothing in the plain language of claim 1 supports that narrow interpretation. The ’774 patent describes a “fabrication profile” broadly and states that the profile can simply “include the dictionary [of configuration information],” or be “used to determine which machineready representation is available or suitable for a target printer.” Ex. 1001, 23:49–52. The preliminary evidence suggests that Douglas’s “operational parameters” would count as a “fabrication profile” because it is “the basis for generation of a machine-ready representation of the three-dimensional model that is executable on the target printer.” Id. at 23:37–39; see infra Section III.C.8. We also disagree that Petitioner’s argument is impermissible hindsight, because it is based on the disclosures in Douglas and Mark, and Petitioner has articulated a sufficiently persuasive reason to combine those references without referring to the ’774 patent itself. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”). Finally, Petitioner appears to rely on Mark for providing a particular example of a fabrication profile, not to replace Douglas’s overall system in which the 3D printer can receive “operational parameters” rather than just G-code. See Pet. 8–10, 17–23; see also Ex. 1005 ¶ 41 (the print queue, which stores tool instructions, may be maintained locally on printers 204 or on print servers 208); see In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc))).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,886,774 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–76 are unpatentable: Zhang anticipates or renders some claims obvious, and the other challenged claims are obvious over combinations including Zhang.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION For the reasons given, Petitioner has demonstrated by a preponderance of the evidence that claims 1–76 of the ’206 patent are unpatentable as follows.6” slip op. at 48
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA.” Pet. 18. Patent Owner does not respond. See PO Resp. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“B. Asserted Challenges Based on Zhang Alone Petitioner asserts that claims 1, 3–7, 9, 11, 13, 15–19, 21, 23, 25, 27– 31, 33–35, 38, 40–44, and 46–48 of the ’206 patent are anticipated by Zhang. Pet. 19–45. Petitioner also asserts that these claims would have been obvious over Zhang. Id. Patent Owner disputes certain aspects of Petitioner’s analysis. PO Resp. 3–50. For the reasons explained below, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–7, 9, 11, 13, 15–19, 21, 23, 25, 27–31, 33–35, 38, 40–44, and 46–48 are anticipated by Zhang or would have been obvious over Zhang.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“system may include a digital video recorder (DVR).” Id. at 45–46 (citing Ex. 1052 ¶¶ 5, 43, 48, 60, 73, 98, 112, 118, 191, 197, 212, 281–285, 296, 546). According to Petitioner, “[a] POSITA would have been motivated to include Reisman’s DVR in Zhang’s STB to provide a more feature-filled and individualized user experience, which in the proposed combination still includes Zhang’s wideband front-end receiver components cited for performing Elements [25A]–[25E].” Id. at 46. Petitioner explains that “Reisman’s DVR improves user experience and flexibility by allowing timeshifted and on-demand viewing, and enabling replay and trick-play (fast forwarding, rewinding, and pausing) of live programming.” Id. (citing Ex. 1052 ¶¶ 191, 197, 212, 284); see also id. at 46–47 (asserting that “[a]dding Reisman’s DVR to Zhang’s system would have been nothing more [than] applying a known technique of integrating a DVR into a set-top box . . . to a known STB . . . that was ready for improvement to yield a predictable result” and that “[a] POSITA would have had a reasonable expectation of success”). Patent Owner does not specifically dispute Petitioner’s contentions in this regard. See PO Resp. Based on Petitioner’s argument and evidence (see Pet. 45–47), we find Petitioner’s proposed combination of Zhang and Reisman teaches all the limitations of claims 25 and 38. We also find that Petitioner’s proffered reasoning for combining Zhang and Reisman supports a legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 40
Patent outcomesUS 11,399,206 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Sep 29, 2025 · IPR2024-00435 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–82 are unpatentable: claims are anticipated by Zhang or obvious over Zhang, Zhang with Reisman, Zhang with Jackson, or the listed combinations with Pandey.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by a person of ordinary skill in the art (“POSITA”) and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA.” Pet. 16. Patent Owner does not respond. See PO Resp. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Claim 1 recites “the DFE is configured to concurrently select and provide each of the plurality of desired channels . . . without providing any of the plurality of undesired channels.” The claim expressly covers both selecting desired channels and providing desired channels. By reciting “without providing any of the plurality of undesired channels,” the claim expressly excludes providing undesired channels; it does not exclude selecting undesired channels. Thus, the claim covers selecting both desired and undesired channels.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner argues that Zhang’s PVR is not a ‘DVR’ as recited in Elements [27D] and [41D], Reisman discloses this feature.” Pet. 50. Petitioner asserts that “Reisman teaches that STBs in a cable system may include a digital video recorder (DVR).” Id. (citing Exc. 1052 ¶¶ 5, 43, 48, 60, 73, 98, 112, 118, 191, 197, 212, 281–285, 296, 546). According to Petitioner, an ordinarily skilled artisan “would have been motivated [to] include Reisman’s DVR in Zhang’s STB to provide a more feature-filled and individualized user experience, which in the proposed combination still includes Zhang’s wideband front-end receiver components cited for Elements [27A]–[27C] and [41A]–[41C].” Id. Petitioner explains that “Reisman’s DVR improves user experience by allowing time-shifted and ondemand view, and enabling, e.g., fast-forwarding, rewinding, and pausing of live programming.” Id. (citing Ex. 1052 ¶¶ 191, 197, 212, 284–285, 546, 758); see also id. at 50–51 (asserting that the proposed combination “merely applies a known technique of integrating a DVR into a STB . . . to a known STB . . . that was ready for improvement to yield a predictable result” and that an ordinarily skilled artisan “would have had a reasonable expectation of success”). Patent Owner does not specifically dispute Petitioner’s contentions in this regard. See PO Resp. Based on Petitioner’s argument and evidence (see Pet. 50–51), we find Petitioner’s proposed combination of Zhang and Reisman teaches all the limitations of claims 27 and 41. We also find that Petitioner’s proffered reasoning for combining Zhang and Reisman supports a legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 37
Patent outcomesUS 11,381,866 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,381,866 - Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Sep 4, 2025 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–3, 6–10, 14–18, and 22–24 are unpatentable; claims 4–5, 11–13, and 19–21 are not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We agree with Petitioner that the ’690 patent does not limit the term “probe” to channel assessment. Pet. Reply 2–4. Reviewing the intrinsic evidence, the “Technical Field” of the ’690 patent states that “some embodiments relate to channel assessment probes,” implying others do not. Ex. 1001, 1:13–14. The ’690 patent further states that “receiver determined probes may be used in a variety of applications” including to “discover hidden nodes” and “off-site network diagnosis.” Id. at 2:20–27. In addition, the ’690 patent states that probes may be used for “network maintenance procedures,” to “replicate a potential problem, reach or discover a distant or previously undetected node on the network, or assist with network admissions procedures.” Id. at 4:25–38. Turning to the claims of the ’690 patent, the evidence of record does not establish that the independent claims recite anything unique or specific to channel assessment (although their scope covers that purpose). Furthermore, dependent claim 7 of the ’690 patent recites that the “probe” is used to diagnose a network problem, and dependent claim 13 recites that the “probe” is used to identify a hidden node. Restricting the independent claims to probes used solely for channel assessment would be contradictory to these dependent claims. Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (construction of term in independent claims should not render dependent claims superfluous or lacking scope).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner that a “physical layer probe” is “a probe that relates to the physical layer.” The term does not appear per se in the specification of the ’960 patent, nor in the prosecution history, but only in claims 9, 17, and 19. However, the term “physical layer” is well-known and is the first layer in the Open Systems Interconnection (OSI) network model. See, e.g., Ex. 1021, 35–40, 69; Ex. 1002 ¶¶ 49–50. The physical layer is used to transmit digital bits over a network, and defines the timing, mechanical, and physical network characteristics required for transmitting the data bits. Hence, a “physical layer probe” is a probe that relates to the physical layer. We need not, and do not, construe the term further to resolve the parties’ dispute. See Realtime, Vivid Techs., supra. Having decided proper constructions for the disputed terms, we proceed in our analysis to consider the parties’ arguments concerning the challenge grounds. In the following sections, we apply the plain meaning of the claim terms, and as necessary, specify what the plain meanings are.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA8 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’690 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Hence, we determine that Petitioner has shown by preponderant evidence that the Ranging Request (“probe request”) message includes CID and SS MAC address and other parameters (“first plurality of parameters”) which at least specify the CID (“content payload of the probe”) and the SS MAC address (“second node”) of the Ranging Response.12 We thus proceed to consider Petitioner’s contentions for the remaining limitations of claim 1, which are undisputed, and determine that claim 1 is anticipated by IEEE-802.16.” slip op. at 29
Patent outcomesUS 8,284,690 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,284,690 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Sep 3, 2025 · IPR2024-00441 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–18 are unpatentable over Kamieniecki and Konstantinos; Petitioner did not show claims 1–18 unpatentable over Renken or Renken and Cholas because Renken is not prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in The Art Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication 1 Because the challenged claims have an effective filing date before the effective date of the AIA, we apply the pre-AIA version of 35 U.S.C. § 103. 2 US 2005/0114879 A1, published May 26, 2005 (Ex. 1009). 3 US 2010/0120386 A1, published May 13, 2010 (Ex. 1010). 4 US 2010/0303181 A1, published Dec. 2, 2010 (Ex. 1016). 5 US 2008/0313691 A1, published Dec. 18, 2008 (Ex. 1017). 6 US 8,649,421 B2, issued Feb. 11, 2014 (Ex. 1011). systems,” and that “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). “Patent Owner accepts the Petition’s [description of a person of ordinary skill] solely for purposes of responding to the Petition in this proceeding.” PO Resp. 11. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we apply Petitioner’s definition in this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). C.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree that the record provides sufficient evidence that one of ordinary skill in the art would have found it advantageous to add a multi-channel receiver to improve monitoring, as Petitioner argues. Having the ability to monitor without waiting for idle or disturbing users would be a clear advantage.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We conclude that Patent Owner has not shown a sufficient nexus between the claimed invention and any product embodying the claimed invention that was successful, praised, or solved a long-felt need. Patent Owner identifies five elements allegedly required “[t]o implement MaxLinear’s Remote Spectrum Monitoring in CPE.” See PO Resp. 65. To support this, Patent Owner cites pages 5–7 of Exhibit 2009. See id.7 That exhibit, however, describes requirements for “Full Band Capture,” not MaxLinear’s “Remote Spectrum Monitoring.” To” slip op. at 31
Patent outcomesUS 8,792,008 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,792,008 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Kliger identifies the problems of splitter reflections causing inter- symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and separately over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are. Furthermore, the ’518 patent’s teachings are applicable to any network experiencing multipath reflections which degrade the ability to achieve high data rates regardless of the media over which those signals are transmitted. Id. at 4:19–32. Consequently, we determine the skill level as follows: A POSITA would have at least a bachelor’s degree in electrical engineering, computer engineering, or a related field and two to three years of experience working in broadband communication networks. Additional education could substitute for professional experience, or vice versa. For the foregoing reasons, our adopted skill level is consisted” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Kliger and Isaksson are analogous art to the ’518 patent because they are from the same field of endeavor as the patent—wired networking systems— and because they are reasonably pertinent to the problem at issue in the patent—overcoming wired-network signal impairments.” Pet. 27 (citing Ex. 1004 ¶¶ 76–80); Pet. Reply 3–12. Patent Owner disagrees with Petitioner’s contention that Isaksson is analogous art. PO Resp. 12–26; PO Sur-Reply 16–25. For the following reasons, we determine that Petitioner has shown by a preponderance of the evidence that Isaksson is analogous art to the ’518 patent because it is reasonably pertinent to the problems identified in the ’518 patent. The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable as obvious, principally over Amit and Jacobsen and, for additional claims, Amit, Jacobsen, and DSL-Book; the Board did not reach grounds 1 and 2.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. Ex. 1002 ¶¶ 17–18; Ex. 2007 ¶¶ 57–58.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Amit is restricted to “single frequency” modulation. PO Resp. 52–56. As Petitioner notes, Amit describes that its HCNM modem uses a channel (e.g., DOCSIS) containing two sub-channels for upstream and downstream signals. Pet. 24 (citing Ex. 1005, 15:18–28). This meets Patent Owner’s definition for multicarrier communications as multiple subcarriers to provide communications of a single channel. PO Sur-Reply 6. We further note that the claims do not recite “multicarrier communications” so the distinction Patent Owner attempts to draw is not supported by commensurate language in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in a claim cannot be relied upon for patentability). Furthermore, even if Amit were restricted to single carrier modulation, as Patent Owner argues, Petitioner relies on Jacobsen for its teaching of multicarrier modulation. Pet. 62–66; PO Resp. 52–56. In essence, Patent Owner attacks Amit individually and does not properly consider how a POSITA would have understood the combined teachings of Amit and Jacobsen. “Non-obviousness cannot be established by attacking references individually where the [challenge] is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” slip op. at 26
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–2, 4–6, 8–10, 12–14, and 16–17 as obvious over Amit and Jacobsen; claims 2–3, 7, 9–13, 15, and 17 as obvious over Amit, Jacobsen, and DSL-Book.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- BurdenUnpatentable
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.