- T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01293 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 as anticipated by and obvious over Wu; claims 6, 7, 12, and 17 as obvious over Wu and Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering (or equivalent field) with 2–3 years of work experience in wireless communications.” Pet. 21 (citing Ex. 1003 ¶¶ 20–22). Patent Owner argues that one of ordinary skill in the art “would have an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Jan 12, 2024 · IPR2023-00891 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–22 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming multimedia.” Pet. 12. Petitioner adds that “[a] lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. (citing Ex. 1003 ¶ 30). Patent Owner does not propose a different level. Prelim. Resp. 13–14 (asserting that “[f]or present purposes, this Preliminary Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill.”). Petitioner’s proposal is consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Bederson, and we adopt it for purposes of this Decision. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“C. Claim Construction The Board uses “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner applies the plain and ordinary meaning of all claim terms and contends that no claim terms require specific construction to resolve the unpatentability issues presented herein.” Pet. 21. Patent Owner proposes certain constructions, but at this juncture, it is not necessary to construe any term explicitly for purposes of this Decision. See Prelim. Resp. 13–27; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“With respect to the claim term “content-related . . . data segments,” the specification states that “the term “content-related” is understood to mean that first and second data segments have a syntactical meaning . . ., such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22 (emphasis added).7 We agree with Patent Owner that the emphasized sentence defines the term “content-related.” Prelim. Resp. 14– 15.8 However, for reasons similar to those discussed in the final written decision in IPR2022-01086, Paper 37 at 15–19, we determine that the “content-related” data segments do not support Patent Owner’s proposal, 7 The ellipses represents omission of the phrase “within the respective data file” because, as discussed above, we need not decide if the preamble (which introduces the data files) is limiting with respect to requiring data files. As discussed below, Petitioner’s showing includes relying on separate data files in Comps. 8 We also recognize that whether two segments have “syntactical meaning” between them may be somewhat subjective as discussed in the analysis of Petitioner’s challenges below. namely “data segments ordered in a file such that they will present the file’s contents in their intended presentation order when rendered sequentially.” See Prelim. Resp. 14; IPR2022-01086, Paper 37 at 15–18. Contrary to Patent Owner’s arguments, the “syntactical meaning” as disclosed in the specification does not require “a sequential, chronological nature” specified by the content relationship, because claims 1 and 9 separately recite that feature by requiring “outputting . . . the content-related first data segments and the content-related second data segments according to their chronological sequence.” See Prelim. Resp. 17 (agreeing that “[i]ndependent claims 1 and 9 require outputting the data segments “sequentially” and “according to their chronological sequence.”). Claim 22 recites a similar feature, namely, “sequentially outputting, by a device for synchronizing content-related data, in a chronological sequence, each of the assigned content-related first data segments and the assigned content-related second data segments.”” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - PTAB · Dec 6, 2023 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–16 over all asserted grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–16 of the ’980 patent on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the above level of ordinary skill. See generally, Prelim. Resp. Patent Owner rather asserts, “[f]or present purposes, [the] Preliminary Response establishes that institution should be denied even under Petitioners’ preferred definition of the level of ordinary skill.” Prelim. Resp. 16. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). At this stage, we do not need to construe any term.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Engineering and Science Library at Carnegie Mellon University by September 23, 2002, and was publicly accessible in the ProQuest repository by June 25, 2002. Pet. 5 (citing Ex. 1013, 3; Ex. 1014, 3). Patent Owner contends that the Petition improperly incorporates by reference Exhibits 1013 and 1014, because the Petition does not discuss particular evidence from these exhibits. Prelim. Resp. 28. Exhibit 1013 is a declaration from Jessica Brenner, who has a Ph.D. and Masters in Library and Information Science. Ex. 1013 ¶ 4. Dr. Brenner testifies that the stamped cataloging data of Zhao is September 16, 2002, and that Zhao would have been publicly accessible within one week, by September 23, 2002. Id. ¶¶ 8–9. Exhibit 1014 is a declaration from Carl Mageski, who is a Technical Support Analyst employed by ProQuest. Ex. 1014 ¶ 2. Mr. Mageski testifies that he reviewed ProQuest’s records regarding Zhao and determined that the full text of Zhao was available on June 25, 2002. Id. ¶ 8. On this record, we are sufficiently persuaded that the testimonies of Dr. Brenner and Mr. Mageski show a reasonable likelihood that Zhao was publicly accessible on September 16, 2002.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - PTAB · Dec 6, 2023 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VII. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (2019) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Additionally, the obviousness inquiry typically requires an analysis of “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. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “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).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“To resolve this controversy, we turn to the decision in Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019). In Hulu, the Board issued a decision denying institution of an inter parties review because the Board found that a petitioner failed to sufficiently show that a reference qualified as a printed publication. Id. at 2. The Board’s Precedential Opinion Panel (POP) ordered a review on rehearing to address the issue of what is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage. Id. The POP determined that the statutory “reasonable likelihood” standard for institution applies to the issue of whether a reference is a printed publication. Id. at 13. The POP “explained that it is a higher standard than mere notice pleading, but, . . . it is lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. In Hulu, Patent Owner argued that “the reasonable likelihood standard is satisfied only when a petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review, with a few limited exceptions.” Id. at 11. The POP, however, determined that “[w]hile the petitioner must submit evidence sufficient to meet the reasonable likelihood standard, some limited opportunities exist for the petitioner to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.” Id. at 14. The POP explained that, for example, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Id. at 15. The POP also explained that, if a patent owner does not challenge the reference’s status as a printed publication, the petitioner may move to submit the declaration through the supplemental information process. Id.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends that Basturk teaches away from providing authentication as an application protocol on an application layer because Basturk discloses that the presence of application level security features does not necessarily imply the security of delivery, which shows the need for security at the transport layer. Prelim. Resp. 43–53. However, Basturk discloses that application level security features are provided by application level security. Ex. 1006, 3. For example, Basturk discloses guaranteeing integrity by signing the data before passing it to the transport level. Id. at 3– 4. Basturk further discloses “a method to transform any transport protocol into a ‘secure’ version, equipped not only with the new security features discussed above, but providing, at least as options, the standard application level security features.” Id. at 5. At this stage, we are sufficiently persuaded that Basturk teaches providing standard application level security features such as authentication. Patent Owner contends that on-the-fly processing as taught by Basturk is not enabled by the use of a trailer. Prelim. Resp. 52–55. Basturk discloses computing signatures as data transmission proceeds, to achieve the goals of avoiding slowing down the regular flow of data, and allowing the possible off-load of signature computations. Ex. 1006, 7, 12. Basturk discloses that the signature of an outgoing packet is computed after data encryption, which complies with the requirement that the signature is computed “on-the-fly.” Id. at 14. Dr. Houh testifies that computing the signature “on-the-fly,” as data is being transmitted, provides the benefits of faster data transmission, reduced jitter, and reductions in computing power. Ex. 1003 ¶ 64. Dr. Houh testifies that calculating the signature of Handley’s RTP packet “on-the-fly” and placing the signature at the end of the packet as taught by Basturk yields the benefit of transmitting data while computing the signature, which minimizes latency as taught by Basturk. Id. ¶ 85. At this stage, we are sufficiently persuaded that a person of ordinary skill would have placed the authentication information of Handley’s RTP packet at the end of the packet as taught by Basturk to yield the benefits of faster data transmission, reduced jitter, and reductions in computing power. Accordingly, for purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Handley and Basturk.” slip op. at 20
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Dr. Houh further testifies that, given the remaining choices of placing the authentication data at the beginning or the end of the payload data, a person of ordinary skill would have recognized that placing the authentication data at the end of the payload data would reduce latency because this allows the packet to be transmitted while the authentication data is calculated. Ex. 1003 ¶ 178. To support this testimony, Dr. Houh relies on other protocols that use integrity checks, such as the Frame Check Sequence located at the end of an Ethernet Frame. Id. (citing Ex. 1014). We are sufficiently persuaded at this stage, based on Dr. Houh’s testimony and supporting evidence, that a person of ordinary skill would have placed the authentication data at the end of the whole RTP packet payload as claimed. Further, on this record, given the choice between placing authentication data at the beginning, middle, or end of the packet, we are sufficiently persuaded that it would have been obvious to place the authentication data at the end. See KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (Reversing the Board’s determination of lack of motivation, stating that “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00972 · APJ David C Mckone · IPR · Final written decision
Claims 1–10 are unpatentable because Speight anticipates them; the Board found Peisa anticipation and Peisa–Heo obviousness unproven for the challenged claims in those grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field, as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 14 (citing Ex. 1004 ¶¶ 47–49). Patent Owner does not contest Petitioner’s contention or propose a level of skill. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agreement that this claim term should be read as reciting two mutually-exclusive alternatives with respect to the “third parameter.” Dec. 11. The parties do not challenge this construction in the Patent Owner Response, Reply, or Sur-reply. On the complete record, we construe “wherein resources are allocated for data of each channel having a second parameter above zero prior to another channel’s data for transmission having a third parameter less than or equal to zero” as reciting two mutually-exclusive alternatives with respect to the “third parameter.”” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. The Petition is required to identify “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner argued in the Petition that “as properly construed, the claimed ‘first parameter,’ ‘second parameter,’ ‘third parameter,’ and ‘fourth parameter’ are four different parameters.” Pet. 17–18. In the Institution Decision, Petitioner prevailed on that point and “we agree[d] with Petitioner that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels.” Dec. 14. Patent Owner “relie[d] on the Board’s construction ‘that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels,’” and proposed distinct parameters in the Specification that it alleges are examples of second and third parameters, albeit not the same two parameters proposed by Petitioner. PO Resp. 9, 29. Petitioner now proposes new constructions for the second and third parameters that would limit those parameters to the two examples it advanced in the Petition and improperly supports these new constructions with new expert testimony and an exhibit from the prosecution of a later patent. Reply 20–25; Ex. 1040 ¶¶ 20–29; Ex. 1038. See also Consolidated Trial Practice Guide (“TPG”)10 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). As Patent Owner observes (Sur-reply 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 21), it has no opportunity to introduce rebuttal evidence contesting the new constructions. See TPG 73–74 (Nov. 2019) (“The sur-reply may not be accompanied by new evidence other than deposition transcripts of the crossexamination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.”). We agree with Patent Owner that it would be unfair to consider Petitioner’s new construction. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”). Thus, Petitioner has forfeited its new claim construction arguments and they will not be considered. See TPG 74 (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). Moreover, these arguments would be unpersuasive even if considered. Petitioner has, at most, cited description in the Specification to show that its identified second and third parameters are examples corresponding to the recited second and third parameters. Ex. 1005 ¶¶ 84–95. This description does not define the second and third parameters nor purport to exclude from the claims any parameter that would otherwise meet the language of the claims. The prosecution history to which Petitioner cites, that of a child application, took place after the prosecution of the ’466 patent and thus, does not constitute a definition or disclaimer of subject matter for claims of the ’466 patent. In any case, the brief argument in the cited response to office action, that “[i]n the algorithm, the first value is provided by the wireless network for each of a plurality of buffers where the buffer having the second value above a threshold transmits data first,” does not define the second and third parameters, disavow any values from those parameters, or even discuss the third parameter. Ex. 1038, 12. Petitioner’s extrinsic evidence, Dr. Akl’s testimony, does little more than repeat the arguments in the Reply and, thus, is of little value. Ex. 1040 ¶¶ 20–29. In sum, we maintain our construction that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels. Under this construction, RAAUq” and RAAUq’, respectively, could potentially be second and third parameters, as could RAAUq’ and RAAUq”, respectively, as long as they satisfy the rest of the pertinent language of the challenged claims.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“production, we still would find that a skilled artisan would not have been able to ascertain from the disclosure in the ’421 application that RAAUq’ could take values less than zero. Instead, even if we were to credit Dr. Lomp’s testimony, to conclude that RAAUq’ can take negative values, a skilled artisan would need to program computer software to simulate the ’421 application’s algorithm and correctly choose starting parameters and other context variables without guidance from the description in the ’421 application. This case is similar to that in New Railhead, where the written description was insufficient because “one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.” 298 F.3d at 1295. This case also is similar to Los Angeles Biomedical Research Institute, in which an application’s written description was insufficient because assumptions and starting variables were not knowable from the disclosure in the application. 849 F.3d at 1058. Thus, even if we were to conclude that Patent Owner has met its burden of production, a preponderance of the evidence shows that the ’421 application does not provide written description support for Alternative A. In sum, we conclude that the ’421 application does not provide written description support for the challenged claims and that, therefore, Speight is prior art to the challenged claims.” slip op. at 41
Patent outcomesUS 9,681,466 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 9,681,466 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - Boe Technology Group Co., Ltd. / Beijing Boe Display Technology Co. et al. v. Element Capital Commercial Company Pte. LtdInstitution deniedPTAB · Oct 12, 2023 · IPR2023-00696 · APJ Russell E Cass · IPR · Institution
The Board denied institution on claim 1 because Petitioner did not show a reasonable likelihood that any asserted Inukai-based ground rendered it unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b) . The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that no formal claim constructions are necessary in this proceeding. Pet. 18. Patent Owner agrees. Prelim. Resp. 4. We determine that it is not necessary to construe any claim terms for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (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 11
- Skill levelSkill level board ownDecided for patent owner
“Both parties agree that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Master’s degree in electrical engineering, physics, or a related field.” Pet. 2 (citing Ex. 1003 ¶¶ 26–27); Prelim. Resp. 4–5 (citing Ex. 2001 ¶¶ 22–23). The parties, however, disagree about the work experience one of ordinary skill would have had. Petitioner asserts that one of ordinary skill would have had “at 1 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 2 (citing Ex. 1003 ¶¶ 26–27). Patent Owner contends that one of ordinary skill would have had “at least two years of relevant work experience in the field of display device technology.” Prelim. Resp. 4–5 (citing Ex. 2002 ¶¶ 21–23). Both parties agree that “[a]dditional education can remedy lack of work experience and vice versa.” Pet. 2; Prelim. Resp. 5. We note that the ’760 patent and challenged claim concern both display device technology and integrated circuit design for display devices. The ’760 patent and challenged claim do not appear to concern integrated circuit manufacturing processes. Accordingly, for purposes of this Decision, we determine that a person of ordinary skill in the art would have had a Master’s degree in electrical engineering, physics, or a related field and at least two years of relevant work experience in the field of integrated circuit design for display devices. However our decision in this proceeding would not change if we adopted either Petitioner’s or Patent Owner’s definition of the person of ordinary skill.” slip op. at 12
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“sufficiently show that Inukai 576 discloses a wiring portion that “crosses” a control line. As noted above, Petitioner acknowledges that the right protrusion’s “full outline is not explicitly shown,” but contends that one of ordinary skill “would have understood or found obvious that the protrusion would have been the same length as the protrusion on the right, due to the ‘endcap rule.’” Pet. 51. However, based on the present record, we agree with Patent Owner that Petitioner fails to provide sufficient support that the “endcap rule” is universally applied. In this regard, we find reasonable Dr. Silzars’s testimony that the “endcap rule” is, “at best, a design generalization which may be used in some applications for semiconductor manufacturing, heavily dependent on what materials are used, what the purpose of the semiconductor [is] and especially the manufacturing process.” Ex. 2001 ¶ 60. Petitioner relies on the Borodovsky patent, but Borodovsky merely describes the general concept that an endcap of a transistor gate may extend some minimum distance beyond an active region so as to ensure that any rounding of the endcap does not occur over the active region. Ex. 1010, 4:21–33; Ex. 2001 ¶ 63; Pet. 52–53. Borodovsky, however, does not suggest how the rule would have been applied to Inukai 576. See Ex. 2001 ¶ 63. Petitioner also does not point to anything in Borodovsky that states that the “endcap rule” requires gate electrodes of the same size or length. See Ex. 2001 ¶ 64. Borodovsky’s design rule merely requires that the endcap extends at least a minimum length, not an exact length, beyond the active region, and states that “other size up amounts may be used.” Ex. 1010, 9:42–46; Ex. 2001 ¶ 64. Thus, assuming Inukai 576’s protrusions are of different length, as pictured, Petitioner’s evidence does not show persuasively that the shorter protrusion would violate the “endcap rule” merely because it is shorter than the other protrusion. We note that Dr. Liu testifies that one of ordinary skill would “have known that in order to maintain a consistent current voltage characteristic for the double-gate transistors, the two channel portions of the double-gate structure would be made as uniformly identical as possible.” Ex. 1002 ¶ 114. Dr. Liu, however, does not provide any evidence or citation for this statement. Id. Dr. Liu also states that “[t]he endcap rule applies to all gates fabricated in the transistor,” so one of ordinary skill “would have understood that the two gates over transistor 107 have equal length,” and thus “the two protrusions would extend equal distance beyond the semiconductor layer.” Id. Again, however, Dr. Liu does not explain why the “endcap rule” would require or suggest this outcome, particularly because the description of the “endcap rule” merely requires that gates have a certain minimum length beyond the semiconductor layer they intersect, not that the gates be of equal length. Id.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,525,760 - Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17
- Skill levelOther
“1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17
Patent outcomesUS 7,631,346 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,631,346
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.