• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCInstituted
  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 · Graham
  Patents in suitUS 7,266,682
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 9,681,466
• Boe Technology Group Co., Ltd. / Beijing Boe Display Technology Co. et al. v. Element Capital Commercial Company Pte. LtdInstitution denied
  PTAB · 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 KSR
  Patents in suitUS 8,525,760
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Netflix, Inc. v. Robocast, Inc.Institution denied
  PTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution

  The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Sercomm Corp. v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01519 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution for claims 1–19 because Petitioner did not show Chun was prior art, defeating both proposed obviousness grounds.

  RulingsInstitution decision

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

    “under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). Petitioner’s burden includes demonstrating that the evidence on which it relies constitutes prior art to the subject patent” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “We find the above-noted arguments persuasive. They account for what is actually set forth in the Korean provisionals, are supported by the testimony of Dr. Psounis, and are unaddressed by Petitioner.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the alleged invention would have a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry. An individual with an advanced degree in a relevant field would require less experience in the design of wireless communication systems and methods.” slip op. at 6

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

    “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) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party offers any specific construction for any claim term. See Pet. 7; Prelim. Resp. 11. For purposes of this Decision on Institution, we have given all claim terms their ordinary and customary meaning and determine that it is not necessary to make that meaning explicit for any term.” slip op. at 7

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,912,513
• Sercomm Corporation v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01520 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Sercomm did not show a reasonable likelihood of proving claims 1–9 and 11–19 unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and related briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–9 and 11–19 of the ’919 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, based on the record before us, we deny institution of an inter partes review of the ’919 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Although slight differences exist in the formulation of such skill level between the parties, we discern no meaningful differences because none of those differences would affect the outcome of our analysis. Considering the subject matter of the ’919 patent, the background technical field, the prior art, and parties’ proposed definitions of the skilled artisan, we apply the level of skill cumulatively set forth above by the parties, which is consistent with testimony of both parties’ experts (Ex. 1003 ¶ 41; Ex. 2003 ¶ 48).” slip op. at 14

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

    “‘number of the one or more station information fields in the NDPA’ found earlier in the claims by explaining that this number is the number of station information fields in the NDPA, rather than, for example, the number of a particular station information field.” Prelim. Resp. 21. Patent Owner argues “Petitioner’s construction simply removes the term ‘cardinality’ from this claim element,” and “introduces ambiguity into the claims by suggesting that the number could be either the number of station information fields or the number (or index) of the station information field directed to a station,” which is the very ambiguity “the patentee sought to avoid” during prosecution.” Id. at 20–22; see id. at 21–27. We agree with Patent Owner and find Petitioner’s arguments unpersuasive. See, e.g., Ex. 1002, 159 (Examiner stating, “The applicant proposed amending the claim to further define the process of determining a number and further defining the number as a cardinality wherein the cardinality is a number of elements in a set or group.” (emphasis added)).6” slip op. at 16

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

    “We agree with Patent Owner and find Petitioner’s arguments unpersuasive. In particular, we find Petitioner does not show sufficiently, let alone with particularity, how or why 802.11ac allegedly discloses (explicitly or inherently) the combined features of “determining” that the number of elements in the set of STA Info fields “is one,” and “in response to” that determination, transmitting first CSI feedback in response to receiving the NDP. Instead, as noted by Patent Owner (Prelim. Resp. 32), Petitioner merely contends that, because 802.11ac’s VHT SU beamforming can be performed with a single station, 802.11ac allegedly discloses sending feedback in response to determining that the number of the one or more STA Info fields in the NDPA is one. We find Petitioner’s reasoning here unpersuasive, and agree with Patent Owner and its expert that Petitioner does not explain, sufficiently and with particularity, how any disclosure in 802.11ac describes channel sounding feedback being sent or received in response to determining the number of STA Info fields. See Prelim. Resp. 31–33; Ex. 2003 ¶¶ 104–109; see also Prelim. Resp. 28–31. For the foregoing reasons, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that 802.11ac discloses limitation 1.D, namely “in response to determining that the number of the one or more station information fields in the NDPA is one, transmitting first Channel State Information (CSI) feedback in response to receiving the NDP,” as recited in independent claim 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,020,919
• Unified Patents, LLC v. Liberty Peak Ventures, LLCAll claims unpatentable
  PTAB · Mar 23, 2023 · IPR2022-00024 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, and 4 are unpatentable: claim 1 is anticipated by Wankmueller, and claims 1, 2, and 4 are obvious over Johnson and Walker.

  RulingsFinal written decision

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

    “Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one. However, such a result can ensue when the method steps implicitly require that they be performed in the order written.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (internal citations omitted). The Federal Circuit has characterized this as a “general rule.” Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014). To determine whether the steps of a method nevertheless should be construed to have an order, “[f]irst, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). “If not, we next look to the rest of the specification to determine whether it ‘directly or implicitly requires such a narrow construction.’” Id. at 1370 (quoting Interactive Gift, 256 F.3d at 1343). “If not, the sequence in which such steps are written is not a requirement.” Id. slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience with systems related to secure communications systems, particularly in the transaction context, where more experience may substitute for less education and vice versa. Pet. 10 (citing Ex. 1015 ¶¶ 29–32). Patent Owner does not dispute this level of skill or make its own proposal. See generally PO Resp. On the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art and supported by expert testimony. 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 22

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

    “Claim 1 further recites “incrementing the counter value.” The parties dispute whether Wankmueller discloses or teaches this limitation. Wankmueller’s RFID chip “maintain[s] a transaction counter and increment[s] the transaction counter before a predefined event, such as before each transaction or after each time a challenge number is presented to the card.” Ex. 1008, 6:14–17 (emphasis added). Thus, Wankmueller discloses incrementing the counter value. However, the RFID chip increments the counter value before an authentication code is generated. As explained in the Claim Construction section above, the parties dispute whether claim 1 requires the “generating” step to generate an authentication tag using a pre-incrementation instance of the counter value before the counter value is incremented in the “incrementing” step.5 For the reasons explained above, claim 1 does not. Thus, we find that Wankmueller discloses both the “generating” and “incrementing” steps. Claim 1 further recites “wherein an RFID transaction is authorized in response to verification of the RFID transaction device authentication tag.” We agree with Petitioner and find that steps 114–118 of Wankmueller’s Figure 2 (reproduced above) show the terminal sending an authorization request with the authentication code and receiving an authorization for a transaction in response. Pet. 27 (citing Ex. 1008, 10:13–27, Fig. 2). Thus, we find that Wankmueller discloses this limitation of claim 1. Patent Owner does not contest Petitioner’s allegations as to this claim limitation. On the complete record, we find that Wankmueller discloses each” slip op. at 27

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “The TPG actually states: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). TPG, 36. Here, the TPG states that expert testimony alone cannot supply a claim limitation when the reference asserted as anticipating is missing that limitation. As noted above, however, Petitioner does not assert that Wankmueller anticipates claim 4. Thus, Petitioner is not using expert testimony to supply an express disclosure that an anticipation analysis requires. Rather, Dr. McNair testifies as to how a skilled artisan would have read Wankmueller and the obvious inferences a skilled artisan would have drawn from the description in Wankmueller. As to obviousness, the TPG makes clear that Petitioner could not merely assert, without record evidence, that Wankmueller’s counter is incremented by a predetermined amount. This is consistent with K/S Himpp, which held that the Board was correct to require a third-party requester, in inter partes reexamination, to offer record evidence to support its conclusory assertions that the structural features of dependent claims were known prior art elements. 751 F.3d at 1365–66. But Petitioner does rely on record evidence, Mr. McNair’s testimony, to show what was common knowledge to those skilled in the art. Pet. 28 (citing Ex. 1015 ¶ 46). Mr. McNair, in turn, cites to several examples in the record showing that incrementing a counter by one was common knowledge. Ex. 1015 ¶ 46 (citing Ex. 1011, 11:58–60; Ex. 1012, 8:27–30; Ex. 1013, 15:27–30). As explained above, we credit that testimony.” slip op. at 31

  Patent outcomesUS 8,066,181 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,066,181
• Google LLC v. Parus Holdings, Inc.Instituted
  PTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.

  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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, 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 11

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

    “On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Nokia Of America Corporation / Ericsson Inc. v. Godo Kaisha IP Bridge 1Instituted
  PTAB · Aug 25, 2022 · IPR2022-00446 · APJ Amber L Hagy · IPR · Institution

  Instituted IPR on claims 1, 3, and 5 for all asserted grounds because Petitioner showed a reasonable likelihood of prevailing, including a compelling challenge based on Goldston.

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’909 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

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

    “month from the institution deadline.” Prelim. Resp. 4. Patent Owner also provides arguments regarding the factors as set out in Fintiv. Id. at 4–14. We have considered the circumstances and facts before us in view of the Fintiv factors and the Memorandum, and determine that the information presented in the Petition presents a compelling unpatentability challenge. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity ground based on Goldston, if unrebutted at trial, would plainly lead to a conclusion that claims 1, 3, and 5 are unpatentable by a preponderance of the evidence. See supra Section II.D.1. Instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum, 5; see also Fintiv, Paper 11 at 14–15 (noting that when the merits of a ground raised in the petition seem particularly strong on the preliminary record, “the institution of a trial may serve the interest of overall system efficiency and integrity because it allows the proceeding to continue in the event that the parallel proceedings settles or” slip op. at 35

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

    “Petitioner’s persuasive showing because it overlooks the entirety of Petitioner’s contentions. Petitioner does not contend that certain subcarriers are assigned to a data channel merely because they “could” carry data. Rather, Petitioner builds its contentions by first providing evidence that Goldston’s “first group” of subcarriers are “data carriers” that transmit, e.g., “digital audio data.” Pet. 31–32. Petitioner then presents arguments and evidence that the ordinarily skilled artisan would have understood from Goldston that, although all of the carriers in the “first group” could be used to transmit digital audio data, certain carriers are assigned specifically to transmit control information, meaning that the remaining carriers would transmit non-control information (e.g., data). Id. at 29–33. In particular, Petitioner presents evidence that, whereas Goldston explicitly states that the innermost pair of carriers is used “to transmit control information,” the “word ‘control’ is omitted from the disclosure of what would be transmitted” on the remaining carriers. Id. at 31–32. Petitioner builds on this analysis by pointing to evidence that the encoding rates disclosed by Goldston for the carriers outside of the innermost pair “would have been well-known digital audio data encoding rates.” Id. at 32 (citing Ex. 1004, 4:19–28). Petitioner also presents evidence of the differing power levels of the innermost pair relative to the surrounding subcarriers, noting that Goldston’s innermost carrier pair in particular is set up specifically to transmit control information because it is set up to transmit at a higher power than the other carriers, and is closest to the center of the channel. See id. at 35–36. As Goldston discloses, “the carriers that are closest to the center of the channel arc least sensitive to errors in the symbol timing, or baud recovery, circuits. These factors combine to make the control information very robust.” Ex. 1004, 8:8–10 (emphasis added). Relying on all of the foregoing evidence, as well as the testimony of Dr. Fuja, Petitioner then argues that the ordinarily skilled artisan “would have understood that Goldston’s plurality of subcarriers ranging ‘from (f0 - 11f1) to (f0 - 2f1) and from (f0 + 2f1) to (f0 + 11f1)’ are assigned to a data channel.” Id. at 33 (emphasis added). In short, we do not view that Petitioner’s contentions and arguments are based on the mere possibility that the subcarriers outside the innermost pair “could be” assigned to a data channel; rather, Petitioner contends that the ordinarily skilled artisan would have understood that they are, in fact, assigned to a data channel. Petitioner’s arguments and evidence are, on this record, persuasive. Patent Owner has not presented arguments or evidence that undermine Petitioner’s persuasive showing. Based on the current record, for the purposes of this Decision, we are persuaded Petitioner has demonstrated sufficiently that Goldston discloses “an assigning section operable to assign a data channel to the first plurality of subcarriers of the multicarrier signal and to assign a control channel to the second plurality of subcarriers of the multicarrier signal,” as recited in claim 1.” slip op. at 22

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

    “the alternative, “[t]o the extent that the Patent Owner contends (and the Board agrees) that the plain and ordinary meaning of ‘base station apparatus’ requires a component in a cellular mobile communications network.” Id. at 51. In particular, Petitioner presents arguments and evidence that Takahashi teaches “a base station that is a component in a cellular mobile communications network” (id. at 52) and that “[i]mplementing Goldston’s techniques (identified above in Ground 1) for assigning control and data channels in an OFDM multicarrier signal to the ‘highspeed downlink base station’ B2 or B4 in Takahashi would yield ‘a base station apparatus equipped with said radio transmitting apparatus according to claim 1.’” Id. at 55. Relying in part on the testimony of Dr. Fuja, Petitioner asserts that the ordinarily skilled artisan “would have been motivated to combine the relevant disclosure in Goldston and Takahashi because, prior to the ’909 patent’s earliest alleged priority date, there were design incentives and market forces prompting the application of Goldston’s techniques for assigning control and data channels in an OFDM multicarrier signal to the ‘high-speed downlink base station’ B2 or B4 in Takahashi.” Id. (citing Ex. 1003 ¶ 130). Patent Owner does not, on this record, specifically address Petitioner’s showing as to the combined teachings of Goldston and Takahashi. Rather, at this stage, Patent Owner’s arguments against Petitioner’s showing are limited to those we have addressed above in connection with Ground 1. In particular, Patent Owner contends that “Petitioners do not rely on Takahashi for the assignment of ‘data’ and ‘control’ channels limitations recited in claim 1. . . . Accordingly, Ground 2 fails to render obvious dependent claim 3 for at least the same reasons set forth above for claim 1.” Prelim. Resp. 34. Based on the current record, we determine that Petitioner has established a reasonable likelihood of prevailing in showing that claim 3 is unpatentable over the combination of Goldston and Takahashi.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,372,909

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.