• Tesla, Inc. v. Autonomous Devices, LLCInstituted
  PTAB · Dec 13, 2023 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Institution

  The Board instituted IPR on claims 3–18 on all asserted grounds, finding a reasonable likelihood that Tesla would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner

    “proceeding significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 26, 2024. See generally Ex. 2006. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 11

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

    “this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that Grotmol discloses each recitation of claim 3. We preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 3 is anticipated by Grotmol.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 4 (citing Ex. 1002 ¶¶ 40–42). At this stage in the proceeding, Patent Owner adopts Petitioner’s proposal. See Prelim. Resp. 5.” slip op. at 16

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

    “Petitioner provides a construction for “means for processing” recited in disclaimed claim 20. Pet. 5. Patent Owner argues that “construction of this term is unnecessary.” Prelim. Resp. 14. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,238,344
• Google LLC v. Nobots LLCSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16

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

    “1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19

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

    “Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36

  Patent outcomesUS 9,595,008 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,595,008
• Ericsson Inc. v. Koninklijke KPN N.V.Instituted
  PTAB · Oct 2, 2023 · IPR2023-00525 · APJ Robert J Weinschenk · IPR · Institution

  The Board instituted review of claims 1–11 on all asserted grounds, finding a reasonable likelihood that claims 1–3, 5–7, and 9–11 are anticipated by Eisl and claims 1–11 are obvious over Eisl.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Petitioner demonstrates that the Examiner overlooked specific teachings of Eisl with respect to the claim limitations that the applicant added to obtain allowance of the challenged claims. In particular, as discussed in detail below, Petitioner presents evidence that Eisl teaches counting “in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network.” See Section II.E.1. As a result, on this record, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a degree in electrical engineering or a similar discipline, with at least two years of relevant industry or research experience, including designing or implementing network systems,” as well as “familiarity with the wireless standards and protocols relating to subscriber management.” Pet. 17. Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. James Olivier. Ex. 1003 ¶¶ 34–43. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,924,500
• Ericsson Inc. v. Koninklijke KPN N.V.Instituted
  PTAB · Sep 7, 2023 · IPR2023-00581 · APJ Robert J Weinschenk · IPR · Institution

  The Board instituted IPR on claims 2–6, 11, 14, and 16 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “First, Patent Owner argues that Angelot previously was presented to the Office during prosecution of U.S. Application No. 14/938,056 (“the ’056 application”), which is “a child of the ’772 [p]atent.” Prelim. Resp. 24, 64–65. Specifically, Patent Owner contends that the Examiner of the ’056 application issued a rejection based on Angelot, and Patent Owner “overcame that rejection.” Id. at 64–65. However, “[u]nder § 325(d), the art and arguments must have been previously presented to the Office during proceedings pertaining to the challenged patent.” Advanced Bionics, Paper 6 at 7 (emphasis added). Here, Patent Owner at most presents evidence that Angelot previously was presented to the Office during proceedings pertaining to an application that claims priority to the ’772 patent. Prelim. Resp. 63–65. Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. See id. Second, Patent Owner argues that Petitioner’s evidence that relaying was known in the art is “cumulative of art cited by [Patent Owner] and considered by the Examiner during prosecution of the ’772 [p]atent.” Prelim. Resp. 52–54. For each asserted ground, Petitioner relies on Angelot for most of the claim limitations and relies on the allegedly cumulative art only to show that relaying was known in the art. Pet. 20–72. But, as discussed above, Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. Thus, on this record, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office. As a result, the first part of the Advanced Bionics framework is not satisfied.” slip op. at 14

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

    “presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a B.S. in Electrical Engineering or a related field with at least five years of experience in designing communication systems.” Pet. 16 (citing Ex. 1002 ¶¶ 34–39). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Daniel Blumenthal. Ex. 1002 ¶¶ 34–39. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 25. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,886,772
• Commscope, Inc. v. TQ Delta, LLCAll claims unpatentable
  PTAB · Aug 15, 2023 · IPR2022-00470 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 3–5, 7, 8, 10–12, and 14 are unpatentable as anticipated by G.992.1 and Cioffi and obvious over Cioffi and G.992.1.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the ’112 patent would have had “a bachelor’s degree in electrical or computer engineering, or equivalent, and at least 5−6 years of experience,” or alternatively, “a master’s degree in electrical or computer engineering, or the equivalent[;] and at least 2−3 years of experience; or a Ph.D. in electrical or computer engineering, or the equivalent, with at least 1−2 years of experience.” Pet. 12 (citing Ex. 1003 ¶ 43). In addition, Dr. Jacobsen testifies that as of the priority date of the ’112 patent, a person having ordinary skill in the art would have been familiar with the relevant standards including T1.413 Issue 1, T1.413 Issue 2, G.992.1, G.992.2, and G.992.3, contributions to the working groups on those standards, and other publications and technology related to DSL systems. Ex. 1003 ¶ 151. The ’112 patent confirms that the ADSL series of the ITU G.992.x standards and the VDSL series of the ITU G.993.x standards were known in the art. Ex. 1001, 1:65−67. Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. For purposes of this Final Written Decision, as we did in the Institution Decision (Inst. Dec. 12–13), we generally adopt the level of ordinary skill as articulated by Petitioner because it is consistent with the ’112 patent and prior art of record, and the testimony of Dr. Jacobsen supports it. We omit the qualifier “at least” because it includes the amount of experience of one of extraordinary skill, rendering the level of ordinary skill vague.” slip op. at 7

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

    “Neither party provides an explicit claim construction for any claim term here. We determine that it is not necessary to construe any claim terms explicitly, because doing so would have no effect on the analyses below of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “second FEC codeword size and the second number of FEC coding parity bytes is based on a counter reaching a value.” Petitioner explains that the SFR in the DRA_Swap_Request message identifies “around which superframe boundary the rate swap will occur,” and that when ATU-R’s superframe counter reaches the value specified in the DRA_Swap_Request message, the ATU-R switches to the new configuration for receiving (the second FIP setting). Pet. 28 (quoting Ex. 1004, App. II.6; citing id. at 11.2.2; Ex. 1003 ¶¶ 264−266). The record supports Petitioner’s arguments and evidence, which we adopt as our own, as summarized above. Based on Petitioner’s arguments and evidence as summarized above, we determine that Petitioner shows by a preponderance of evidence that G.992.1 anticipates claim 1.” slip op. at 12

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

    “teach the subject matter recited in the preamble and elements 1a−1b of claim 1, and relies on G.992.1 to teach element 1c. See Pet. 37−48; supra §§ II.D.2, III.E. Petitioner also asserts that a person of ordinary skill in the art would have been motivated to combine the broad disclosures of on-line reconfiguration of FEC parameters of ADSL transceivers of Cioffi with the detailed description of the messaging and communications for implementing on-line reconfigurations of FEC parameters of G.992.1, so that the transceivers would know how and when to switch to the new FEC parameters at the appropriate time (e.g., the same time). Pet. 38−39 (citing Ex. 1003 ¶¶ 329, 331). The record supports Petitioner’s arguments and evidence, which we adopt as our own, as summarized above. Based on Petitioner’s arguments and evidence as summarized above, we determine that Petitioner persuasively shows that the combination of Cioffi and G.992.1 teaches all the limitations recited in claim 1, and persuasively supports its showing by articulating a persuasive reason with factual underpinnings to combine the teachings. Accordingly, we determine that Petitioner shows by a preponderance of evidence that the combined teachings of Cioffi and G.992.1 would have rendered claim 1 obvious.” slip op. at 17

  Patent outcomesUS 10,567,112 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,567,112
• Google LLC v. Flypsi, Inc.Instituted
  PTAB · Jul 31, 2023 · IPR2023-00358 · APJ Robert J Weinschenk · IPR · Institution

  Instituted IPR of claims 1–4 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “evidence that specifically addresses a stay of the District Court Litigation pending this proceeding. See Pet. 58–59; Prelim. Resp. 25–26; Reply 1; Sur-reply 1. We decline to speculate based on the record in this case whether the District Court would grant a stay of the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 8

  • Skill levelSkill level petitioner adoptedOther

    “had “an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002 ¶¶ 17–18). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bill Lin. Ex. 1002 ¶¶ 17–18. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 13

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7; Prelim. Resp. 6. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13

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

    “On this record, Patent Owner’s argument is unavailing. The portion of Backhaus cited by Petitioner discloses “that certain relationship numbers may be used for a plurality of subscriber number and third party number combinations, i.e., in certain embodiments a given relationship number may not be unique to a given subscriber number and third party number combination.” Ex. 1005 ¶ 47 (emphasis added); see Pet. 22–23. Patent Owner appears to interpret the phrase “plurality of subscriber number and third party number combinations” in Backhaus as indicating that a relationship number may be associated with “two or more . . . subscriber” numbers, but “not two or more [third party] numbers.” See Prelim. Resp. 15 (emphasis omitted). We disagree. On this record, we see no reason to interpret the phrase “plurality of subscriber number and third party number combinations” in Backhaus as excluding combinations of one subscriber number with two or more third party numbers. See Ex. 1005 ¶ 47.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,334,094
• Google LLC v. Flypsi, Inc.Instituted
  PTAB · Jul 31, 2023 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Institution

  The Board instituted IPR of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1, 2, and 4 are anticipated by Backhaus.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “have invested only some resources in the District Court Litigation as to issues of unpatentability involving the ’585 patent. The District Court issued a claim construction order that addresses two terms in the ’585 patent, but the District Court stated only that those terms have their “[p]lain and ordinary meaning.” Ex. 1016, 2. And the evidence of record indicates that fact discovery is ongoing, expert discovery has not begun, and the deadline for dispositive motions is not until October 2023. Ex. 2003, 1–2. Thus, we determine that the third Fintiv factor weighs slightly against discretionary denial of institution.” slip op. at 10

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bill Lin. Ex. 1002 ¶¶ 17–18. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 12

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7–8; Prelim. Resp. 5. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,218,585
• Akamai Technologies, Inc. v. Equil IP Holdings LLCInstituted
  PTAB · Jul 21, 2023 · IPR2023-00330 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claim 9, finding a reasonable likelihood it would be shown unpatentable as obvious over Tso and Huang; Samaniego was excluded as prior art.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, we decline to exercise our discretion to dismiss under 35 U.S.C. §§ 314(a) or 325(d), and determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. Accordingly, we institute an inter partes review of the challenged claim on all grounds raised in the Petition.” slip op. at 2

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

    “the same object . . . can be served directly from the stored copy in proxy server cache”), 6:63–67 (cache manager “maintains a local copy of the partially rendered . . . object in order to avoid repeating some object rendering operations”), 7:23–8:11; Ex. 1003 ¶¶ 67–68, 71, 89–91, 98). But Neogi does not describe caching an object in order to avoid repeating rendering operations upon subsequent requests for the same object. Rather, portions of Neogi cited by Patent Owner describe a pipeline constructed according to control parameters for the user’s request for transcoding, which may include intermediate filtering stages. Ex. 2011, 1:53–60. Neogi’s buffer pools “fulfill the memory requirements of the particular stages of the adaptive pipeline.” Id. at 3:2–4. We agree with Petitioner that Patent Owner’s citations to Neogi do not show the description of a cache that stores partially-rendered content in a local cache to allow subsequent requests to avoid re-rendering or re-retrieving content. See Prelim. Reply 6. Thus, we determine that there were material differences between Huang and Neogi, that Huang is not cumulative of Neogi, and that there is a significant difference between Neogi and Huang, considering the manner in which Petitioner uses Huang in its unpatentability arguments. Having thus evaluated Becton, Dickinson factors (a), (b), and (d) with respect to the facts of the present proceeding, we determine that the same or substantially the same art or arguments were not presented to the Office previously. Thus, we do not proceed to the second prong of the Advanced Bionics framework, and we will not discretionarily deny the Petition under § 325(d). For the foregoing reasons, we are not persuaded to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12

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

    “content, and tracking cached versions available via Huang’s RHI information. Id. at 18 (citing Ex. 1004, 5:39–41, 14:64–15:6; Ex. 1005, 6:9– 23, 6:23–67; Ex. 1003 ¶ 71). Petitioner argues that the mechanisms in the two references are complementary and that Huang teaches “how to further improve speed and efficiency” in staged transcoding by utilizing local cached content to avoid repeating operations and to track transcoding status of content. Id. at 18–31 (citing inter alia Ex. 1003 ¶¶ 72–73). Petitioner asserts that one of ordinary skill in the art would have had a reasonable expectation of success, as a straightforward application of the teachings of Huang in Tso’s similar staged transcoding system. Id. at 21 (citing, inter alia, Ex. 1003 ¶ 74). At this time, Patent Owner does not comment on Petitioner’s proposed reasons for combining Tso and Huang. With respect to the Petitioner’s proposed combination of Tso and Huang by one of ordinary skill in the art, we find Petitioner has sufficiently shown, on the present record and for the purposes of institution, that a person of ordinary skill in the art would have had reason to combine the teachings of Tso and Huang.” slip op. at 17

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

    “To begin, the language of section 256 indicates that a certificate of correction issued pursuant to the statute is applied retroactively to the patent in which the correction is made. See Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d 349, 358 (D.N.J. 2008).8 Section 256(b) expressly states that “[t]he error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.” This statutory language has been interpreted to mean that, despite an initial error being made in the naming of the inventor(s), once this error has been corrected, it is as if the patent was valid from the beginning and the defect in inventorship had never happened. See Viskase, 261 F.3d at 1329; see also Emerson Electronic Co. v. Sipco LLC, IPR2016-00984, Paper 52 at 11–21 (PTAB January 24, 2020) (Decision on Remand) (distinguishing the retroactive effect of section 256 from sections 254 and 255, which are prospective). Next, we must consider whether the correction to the inventorship of the ’009 patent can retroactively correct the ’242 patent’s priority claim to the ’009 patent under 35 U.S.C. § 120. If so, Samaniego would no longer be available as prior art because the ’242 patent would then have an inventor in common with the ’009 patent and the ’904 application from which it issued and upon which Samaniego is based.” slip op. at 27

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,495,242
• Akamai Technologies, Inc. v. Equil IP Holdings LLCInstitution denied
  PTAB · Jul 21, 2023 · IPR2023-00332 · APJ Richard M Lebovitz · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 unpatentable: Tso did not disclose the claimed request information, and Samaniego was not prior art.

  RulingsInstitution decision

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

    “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). After considering the Petition, the Preliminary Response, the Preliminary Reply Brief, the Preliminary Sur-reply, and the evidence of record, for the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one claim challenged in the Petition. Hence, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in computer systems, computer science, or the equivalent thereof, and at least two years of experience with networked media delivery or related technologies.” Pet. 10 (citing Ex. 1003 ¶¶ 45–46, 48–49). Patent Owner does not dispute Petitioner’s statement of the level of ordinary skill in the art. Prelim. Resp. 8. Petitioner’s definition of a POSITA is consistent with the level of skill disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for the purpose of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Tso discloses predetermined “selection criterion may comprise, for example information contained in . . . a data packet received by transcoding server 34.” Ex. 1004, 6:66–7:2. However, contrary to Dr. Madisetti’s testimony,4 the cited disclosure in Tso does not identify the sender of the packet as the network client 12 nor does Tso state that any of the nine disclosed predetermined selection criteria are contained in a data packet. Dr. Madisetti’s statement is conclusory, omitting any reasoning as to why one of ordinary skill in the art would have concluded that the “content characteristics” are received in a data packet from the network client 12, when such information is not explicitly stated in the portion of Tso 4 “The ‘request packet’ sent by the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that includes ‘selection criterion,’ which is used to specify what transcoding should be applied to the content. Tso, 6:64- 8:9.” Ex. 1003 ¶ 66 (emphasis added) (footnote omitted). referenced by Dr. Madisetti. We do not accord weight to conclusory expert testimony. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 n.5, 1360 (Fed. Cir. 2019).” slip op. at 21

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

    “As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), only those terms that are “in controversy, and only to the extent necessary to resolve the controversy,” need to be construed. See also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid to inter partes reviews). Here, a construction of “content generation operations” and “transformation operations” is not necessary to resolve the unpatentability issues before us. Consequently, we do not address Petitioner’s proffered claim constructions.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,158,745
• Bio Imaging SAS D/B/A Vilber v. Spectral Instruments Imaging, LLCInstitution denied
  PTAB · Jul 19, 2023 · IPR2023-00449 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable, principally because Olympus did not disclose the claimed support structure mounting both the assembly and camera.

  RulingsInstitution decision

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

    “As we determined, the “support structure” requires that it is suitable to support the claimed “excitation light source assembly” and camera. See Section IV.B above. Petitioner points to structure of Figure 1 of Olympus (namely, base 6, shaft 7, bearing 8, C-ring 8b, and associated hardware) that is suitable to support the light source assembly but not the camera. Petitioner argues that “photodetector/CCD camera 24” is discussed in Olympus. See Pet. 35–36 (citing Ex. 1040 ¶¶ 50, 52, 53). But Petitioner does not show the camera is supported by the same structure in Figure 1 that supports the light source assembly. For Figure 22’s embodiment, Petitioner apparently contends the fluorescence detecting unit 28 is the claimed camera. See Pet. 36–37 (citing Ex. 1040 ¶¶ 200–210, Fig. 22 (annotated at Pet. 37); Ex. 1004 ¶ 65). Specifically, Petitioner argues “the embodiment of FIG. 22 (which uses the same reference numerals) light source holding member 9 is fixed and is mounted to a cylindrical fixed shaft 7 and associated hardware to position it with respect to the camera and to maintain them above sample table 1.” Id. at 36 (emphasis added). But Figure 22 and the associated description do not describe a “camera.” See also Prelim. Resp. 17 (citing Ex. 2001 ¶¶ 29–30) (arguing Figure 22’s embodiment does not include a camera). Petitioner does not show that the fluorescent detector is the equivalent of a camera or that, if it is a “camera,” that it is supported by the light source holding member. This missing proof is not met by the Petitioner’s unsupported argument. The Talghader Declaration does not include testimony that the “support structure” mounts the claimed camera, instead pointing out that “[l]ens 5, lens 23, and photodetector/CCD camera 24 are on optical axis 5a.” Pet. 36 (citing Ex. 1004 ¶¶ 64–66). The Talghader Declaration specifically directed to limitation 1.a and the “support structure” term lacks any discussion or analysis of the “support structure” term. See Ex. 1004 ¶¶ 86– 87). Olympus does describe, in Figure 6, a fluorescence detection unit 28. Ex. 1040 ¶¶ 71–72, Fig. 6. However, because both Figure 6 and Figure 1 are described as illustrating the same embodiment, the camera in that embodiment is specifically portrayed in Figure 1, and Figure 6 does not indicate that it is mounted to the support structure. Id. ¶ 216 (page 29) (describing both Figures 1 and 6 as “according to a 1 embodiment”).” slip op. at 17

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

    “The ’516 patent describes the support structure by saying that the “excitation light source assembly” is provided with a “suitable support structure 32.” Ex. 1001, 4:24–26. In addition, Figures 2 and 3 are referenced specifically. Id. Later in the Specification it is explained that The support structure 32 is configured to receive camera 36, control system 40, as well as various other components and systems required for operation of the imaging system 12. However, because such various other components and systems that may be required or desired for the operation of the imaging system 12 are not required to understand or practice the present invention, such additional components and systems will not be described in further detail herein. Id. at 6:25–32. We draw two conclusions from the Specification. First, no specific support structure is necessary. Second, the “support structure” is “not required to understand or practice the present invention.” With the preceding in mind, we determine that a “support structure” means a structure that is suitable to support the claimed “excitation light source assembly” and camera.” slip op. at 10

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

    “C. Legal Standard for Anticipation In order for a prior art reference to serve as an anticipatory reference, it “must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”). As the Federal Circuit has held: This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). Further, “[a] claim limitation is inherent . . . if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless, 344 F.3d 1186, 1192 (Fed. Cir. 2003).” slip op. at 11

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

    “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the Board must consider whether a person of ordinary skill would have been motivated to combine the prior art to achieve the claimed invention. NuVasive, 842 F.3d at 1381. As the U.S. Court of Appeals for the Federal Circuit found, in quoting from the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007), “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir. 2017). slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,901,516

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.