• Duration Media LLC v. Rich Media Club LLCInstituted
  PTAB · Aug 30, 2023 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board instituted inter partes review of claims 1–10 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable as obvious over Badros alone or with Harkins.

  RulingsInstitution decision

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

    “Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Petitioner proposes the term ‘render’ should be construed as expressly defined by the applicant’s lexicography in the ’329 patent claims and specification to mean ‘the process of requesting and loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser.’” Id. (quoting Ex. 1001, 7:15–19). The cited portion of the ’329 patent is accurately quoted but it is not clear on the current record whether the ’329 patent defines “render” as requiring both the requesting and loading of content or merely just the loading of content that has been requested. In multiple other instances, including the claims themselves, “render” is used exclusively in reference to the loading of content and not the requesting of it. See, e.g., Ex. 1001, 7:9– 10 (referring to “a pre-defined area of the ad content display page where the content is to be rendered”), 8:19 (referring to “content that was already rendered on the page”), 9:11–15 (“Content is only rendered on an ad content display page to a viewer when and/or to the extent that the pre-defined ad content display page triggering area is within, or within a pre-defined distance outside of, the viewer’s browser screen dimensions and scrolling position.”), 69:3–4 (claim 1 reciting “wherein the browser is further configured to render the replacement advertisement in the predefined area”). For purposes of this Decision, we apply the following construction for render: loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser. slip op. at 7

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

    “Petitioner proposes “[t]he term ‘replacement advertisement’ should be construed to mean ‘a new ad/content rendered in place of a previous ad/content’ as used in the context of the ’329 patent claims and specification.” Pet. 10. Petitioner supports its proposed construction with the following disclosure by the ’329 patent: “The billboard module may also cease rendering or send additional requests to the ad dispatcher server to select a new ad/content to render in the billboard module, say if the billboard was in view for a pre-determined period of time, or has been scrolled outside the viewer’s browser window dimensions.” Pet. 10 (quoting Ex. 1001, 12:65–13:3). For purposes of this Decision, we apply Petitioner’s proposed construction for replacement advertisement.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “discussed limitations, Petitioner also proposes that we construe “th[e] ‘in response to’ limitation [of claim 1 as] non-limiting because it requires a condition precedent that need not ever occur.” Pet. 34–35 (same). We are not persuaded and reject this proposed construction. The full limitation at issue recites: (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers. Ex. 1001, 68:59–63. As properly construed on the present record, the “in response to” language modifies the recited step of “causing a communication to be sent to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time.” In short, “causing a communication” is a required step of the method of claim 1.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,443,329
• Commscope, Inc. v. TQ Delta, LLCAll claims unpatentable
  PTAB · Aug 15, 2023 · IPR2022-00470 · APJ Karl D Easthom · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 10,567,112 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,567,112
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.

  RulingsFinal written decision

  • Skill levelOther

    “III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6

  • BurdenDecided for patent owner

    “Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37

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

    “Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36

  Patent outcomesUS 10,622,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 10,622,842
• Commscope Technologies LLC v. Dali Wireless, Inc.Instituted
  PTAB · Jul 21, 2023 · IPR2023-00466 · APJ Sharon Fenick · IPR · Institution

  The Board instituted review of claims 7–9, 11, 15, 17, 18, 20, and 21 on all asserted grounds, finding a reasonable likelihood of unpatentability.

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in wireless communications networks and engineering, including some knowledge of or experience with distributed antenna systems. An individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years). Pet. 19 (citing Ex. 1003 (Declaration of Dr. Anthony Acampora) ¶ 24). Patent Owner proposes substantially the same level of skill, but does not require the industry experience in wireless communications networks and engineering to include “some knowledge of or experience with [distributed antenna systems].” Prelim. Resp. 8–9 (citing Ex. 2001 (Declaration of Dr. Daniel Foty) ¶ 13); Ex. 1025, 9–10). For purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. Our decision would not be different if we adopted Patent Owner’s proposed level of skill.” slip op. at 11

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

    “On the present record and for the purpose of this Decision, we agree with Petitioner that the proper construction of “communications unit” encompasses multiple DRUs or antenna units. Although Patent Owner is correct that not every embodiment needs to be reflected in every claim, and indeed, some embodiments may not appear in any claim, we do not agree that there is evidence supporting Patent Owner’s argument that the construction of “communications unit” should be narrowed to the embodiment requiring only one DRU/antenna. The cited claims do not indicate that multiple units may not transmit at the sets of frequencies recited. Additionally, although Patent Owner cites claim 16 as requiring that each communications unit is a single DRU, if that were a correct reading of claim 16, it is not clear what the claim recitation would add, as it would not narrow the prior recitation of a “communications unit” from claim 15. Such interpretations are disfavored. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim construction that would render a claim limitation meaningless); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that “claims are interpreted claim 16 uses the inclusive “comprises” in its recitations, which is an open-ended term and does not exclude the possibility of other DRUs in a communication unit. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Additionally, with respect to claim 20, Petitioner argues that “the first frequency band” and “the second frequency band” recited in claim 20 lack antecedent bases and are indefinite. Pet. 42, 64. This issue was addressed in the Eastern District of Texas cases claim construction order that construed “the first frequency band and the second frequency band” as “the first frequency range and the second frequency range.” Ex. 1037, 19–20. For the purposes of this Decision, we agree with and adopt the reasoning and this determination is preliminary and for the purposes of this Decision; the parties may address it further in future briefing in accordance with our rules.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,197,358
• 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
• Commscope Technologies LLC v. Dali Wireless, IncInstituted
  PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.

  RulingsInstitution decision

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

    “f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt 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, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20

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

    “Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,334,499
• Realtek Semiconductor Corp. v. Future Link Systems, LLCAll claims unpatentable
  PTAB · Jan 4, 2023 · IPR2021-01182 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 2, and 7–14 are unpatentable as obvious over Guthrie and Budruk; the Board did not reach anticipation by Guthrie alone.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s declarant, Dr. Levy, describes a person of ordinary skill in the art as having “a Bachelor’s degree in electrical or computer engineering, or an equivalent field, and approximately three (3) years of industry or research experience.” Ex. 1001 ¶ 27. Patent Owner’s declarant, Dr. Brogioli, agrees with this proposed level of skill in the art. Ex. 2002 ¶ 29. This description of a person of ordinary skill appears to be generally consistent with the subject matter of the ’680 patent. For purposes of this Decision, we adopt this assessment of the level of ordinary skill.” slip op. at 8

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

    “We have considered the parties’ positions on claim construction as well as the claim construction adopted by the district court in the Intel case (see Ex. 1014, 23–25). In this Final Decision, we determine that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 9

  • Strike new argumentNew argument consideredDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “As previously discussed with respect to limitation 1[c] (see Section II.E.4), Patent Owner’s criticism of Petitioner’s combination is misplaced because the Petition does not propose to incorporate the port and virtual channel arbitration rules from Budruk into Guthrie’s system. Instead, the Petition proposes to use Budruk’s port and virtual channel arbiters, modified to use the ordering rules disclosed in Guthrie. Pet. Reply 12 (citing Ex. 2004, 49:23–51:23). Similarly, Patent Owner’s argument with respect to reasonable expectation of success is based on this same misunderstanding. See, e.g., Ex. 2002 ¶ 60 (A person of ordinary skill in the art “would not have had a reasonable expectation of success in making this modification to Guthrie’s system, because a [person of ordinary skill in the art] would not know how to implement a virtual channel arbiter in a PCI system.”). As Dr. Levy explains, however, a person of ordinary skill in the art would have made the combination by having a first arbiter (Budruk’s port arbiter) implement the protocol-based ordering rules from Guthrie, and having a second arbiter (Budruk’s virtual channel arbiter) implement the performance-based ordering rules from Guthrie. See Ex. 2004, 49:23–51:23. Dr. Levy further explains that “[a]n arbiter is little more than software or hardware that implements arbitration rules, so a [person of ordinary skill in the art] would have had no difficulty at all in modifying the arbiters of Budruk in this way to make a modified system of Guthrie.” Ex. 1017 ¶ 35. “The table of rules itself,” Dr. Levy explains, “is all that a [person of the art) in order to implement arbiters for those rules.” Id. “The fact that Guthrie itself does not mention details of arbiters is consistent with the fact that a [person of ordinary skill in the art] did not need to be instructed on how to create an arbiter to implement arbitration rules. That is well within the skillset of a [person of ordinary skill in the art] and did not need to be specified by Guthrie.” Id. Based upon the complete record, Petitioner has demonstrated that one” slip op. at 33

  Patent outcomesUS 7,917,680 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,917,680
• Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentable
  PTAB · Oct 11, 2022 · IPR2021-00762 · APJ Sharon Fenick · IPR · Final written decision

  The Board held claims 1–12 not unpatentable because Petitioner did not show that FlexWave Prism Manual was publicly accessible before the critical date.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Our determination regards obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983)). We therefore remove the open-ended term “a minimum of” from Petitioner’s proposal, and adopt for this decision the following definition: “a person of ordinary skill in the art at the time of the claimed invention would have had: (1) a bachelor’s degree in electrical engineering; and (2) 3–4 years of industry experience in wireless communications networks and engineering. However, an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1–2 years).” This level of skill comports with the teachings of the ’508 patent and the asserted prior art.” slip op. at 7

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

    “Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No claim terms require construction to resolve the controversy before us. See Nidec, 868 F.3d at 1017.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “c) Conclusion After considering this record evidence, Petitioner has not shown that one of ordinary skill would have performed the searches Mr. Stravitz performed on the EAS database. Mr. Stravitz’s searches appear to have been performed at the direction of counsel to discover whether and how FlexWave Prism Manual could be retrieved from the EAS database by someone who knew about FlexWave Prism Manual, without consideration of whether one of ordinary skill would have performed the searches absent a search directed towards FlexWave Prism Manual or would have known about the EAS database. Thus, Petitioner has not shown that one interested in and ordinarily skilled in the art relating to the ’508 patent would have found FlexWave Prism Manual using the EAS database.” slip op. at 25

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

    “For these reasons, our determination is that FlexWave Prism Manual has not been shown to be publicly available. E. Conclusion For the reasons given above, Petitioner has not met its burden to show that FlexWave Prism Manual was disseminated or otherwise made available to the extent that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. All instituted grounds of unpatentability rely on FlexWave Prism Manual. Pet. 23–77; see Dec. on Inst. 17–29. Therefore, Petitioner fails to demonstrate by a preponderance of the evidence that any of the challenged claims are unpatentable based on the instituted grounds.” slip op. at 27

  Patent outcomesUS 9,826,508 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,508
• Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentable
  PTAB · Jul 19, 2022 · IPR2021-00408 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are not unpatentable because Petitioner did not show that Kummetz-464 discloses the claimed QoS of network traffic used to reconfigure sectors.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In the Decision on Institution, we concluded that one of ordinary skill would have had (1) a bachelor’s degree in electrical engineering; and (2) a minimum of 3-4 years of industry experience in wireless communications networks and engineering. Dec. on Inst. 9–10 (citing Ex. 1003 ¶ 28). We additionally concluded that “an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1-2 years),” and that “the person of ordinary skill at the time of the invention would additionally possess some experience with or knowledge of DAS.” 6 The record does not include any evidence of secondary considerations of nonobviousness. court action), 100:15–102:8). Patent Owner notes its agreement with this conclusion, and its expert adopted it. PO Resp. 22; Ex. 2023 ¶ 5. Petitioner provides no further comment in its post-institution briefing. After considering the record, we conclude that the same level of skill we adopted in the Decision on Institution should apply. This level of skill comports with the disclosures of the ’454 patent and the asserted prior art.” slip op. at 10

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

    “As noted in the Decision on Institution, a claim construction order issued in the related district court action in the final week of the period set forth for institution. Id. at 16 n.11. This claim construction order adopts Petitioner’s proposed definition. Ex. 1017, 14–21. has not established that Kummetz-464 teaches the determination of a QoS of network traffic. Thus, we need not resolve the parties’ claim construction dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

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

    “We agree with Petitioner that the relative concentration of devices is a function of the number of users, which is a KPI. See Pet. 31; Ex. 1003 ¶ 95. But we determine Petitioner fails to establish the relative concentration of devices is a quality of service of a network traffic. Petitioner’s declarant describes QoS as a function of KPIs without more, and asserts that the relative concentration of devices between coverage zones would be a QoS. Ex. 1003 ¶¶ 93–103 (concluding that “Kummetz[-464] discloses that the controller 108 can determine one or more traffic indicators (i.e., KPIs) and a function of the traffic indicators (i.e., QoS = function of the one or more KPI” and “network performance is expressed by a number of KPIs which leads to the QoS”). While Petitioner’s declarant describes this as consistent with the teachings of the ’454 patent relating to adjusting traffic loads, no explanation is provided as to how capacity (as in Kummetz-464’s example) would meet the requirement of a QoS of network traffic, and no further testimony or evidence was adduced regarding what one of ordinary skill in the art would have thought QoS to mean. See id. We credit the testimony of Patent Owner’s expert that the plain meaning of “QoS” requires that the QoS be a value that indicates network performance.7 Ex. 2023 ¶ 55. We agree with Patent Owner that Petitioner does not establish Kummetz-464 discloses that a concentration of wireless devices is indicates network performance. See PO Resp. 43. As noted by Patent Owner during oral argument, “[y]ou can have perfect information of relative concentration of devices and still not know anything about network traffic.” Tr. 36. Patent Owner provides an example of a church service in which there are a large number of users (large concentration of user devices), but no traffic. Tr. 38. Conversely, we observe that a small concentration of user devices may have a large impact on network performance if engaged in activities requiring heavy network traffic usage. 7 We respectfully disagree with the dissent that the specification requires a different interpretation. The ’454 patent describes a QoS as a weighted combination of three KPIs (cost factors) that indicates network performance. See Ex. 1001 11:48–50, 14:41–51. This supports Patent Owner’s position that the plain and ordinary meaning of quality of service (QoS) indicates network performance. Although the KPIs discussed are exemplary, to fall within the bounds of claim 1, the plain meaning of quality of service of a network traffic requires the function to indicate network performance (i.e., the “quality” of the network). be a function of KPIs, but it is not a QoS according to the plain meaning of that term, and is not “of a network traffic” because it may be unrelated to network traffic. Thus, Petitioner fails to persuade us that Kummetz-464’s description of a concentration of wireless devices discloses a quality of service of a network traffic. We further determine that Petitioner fails to establish Kummetz-464’s” slip op. at 23

  Patent outcomesUS 10,506,454 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 10,506,454
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Scramoge Technology Ltd.Instituted
  PTAB · Jun 23, 2022 · IPR2022-00385 · APJ Jameson Lee · IPR · Institution

  The Board instituted review of claims 1, 4, 5, 8–13, and 17–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on Hiroki anticipation and Hiroki–Akiho obviousness.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “the petitioner in IPR2022-00117. Petitioner here also represents that none of its real parties in interest is related in any way to the petitioner in IPR2022- 00117. Prelim. Reply 5. Petitioner further represents that it has not coordinated in any way with the petitioner in IPR2022-00117 with regard to challenging the ’215 patent before the Board. Id. Petitioner additionally notes that it and the petitioner in IPR2022-00117 are not even codefendants in the same district court litigation, were not sued by the Patent Owner at the same time, and were sued on the basis of each’s own separate products. Id. at 6.6 With respect to such lack of relationship, Patent Owner makes no contention to the contrary. For the foregoing reasons, General Plastic Factor 1 weighs very strongly against exercising discretion to deny the Petition. 2. Factors 2–5 Regarding Factor 2, Patent Owner points to no evidence that as of the filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner knew of any of the references applied in the Petition at issue in this proceeding. General Plastic Factor 2 weighs against exercising discretion to deny the Petition. Regarding Factor 3, the Petition here was filed on December 31, 2021, prior to the filing of Patent Owner’s preliminary response and the Board’s institution decision in IPR2022-00117. Patent Owner points to no evidence of Petitioner using any Board decision or Patent Owner submission as a roadmap to prepare the Petition. General Plastic Factor 3 weighs against exercising discretion to deny the Petition.” slip op. at 11

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

    “2. Fintiv Factor 2 It is undisputed by the parties that the district court has now scheduled trial in both the parallel litigation involving Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., and the parallel litigation involving Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date of March 6, 2023 is approximately four months prior to the expected time of a final written decision in this proceeding. Fintiv factor 2 weighs in favor of exercising discretion to deny the Petition.” slip op. at 14

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

    “e) Conclusion Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 is anticipated by Hiroki.” slip op. at 37

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

    “crystalline alloy, as claimed. Ex-1002, ¶¶ 115–116; Ex-1015, 1:13–15; Ex- 1007, [0015]; Ex-1018, 1:38–39.” Pet. 29. However, paragraph 41 of Sakuma, cited by Petitioner, describes Sakuma’s embodiment as shown in Figure 7, not Sakuma’s embodiment as shown in Figure 2A. Ex. 1005 ¶ 41. As discussed above in Section II.C.2, the embodiment disclosed by Sakuma with respect to its Figure 2A is structurally different from the embodiment disclosed by Sakuma in Figure 7. Whereas in the Figure 2A embodiment soft magnetic sheet 11 comprises separate magnetic tile pieces 311 arranged in a single loop and a single layer, in the Figure 7 embodiment soft magnetic sheet 11 comprises not magnetic pieces arranged in one layer but two stacked magnetic sheets. Ex. 1005 ¶¶ 28, 29, 40, 41. Sakuma does not identify “sendust” as usable material for magnetic pieces 311 in the Figure 2A embodiment. Id. ¶ 42. Petitioner does not provide any reason why one with ordinary skill in the art would have read Sakuma’s disclosure of “sendust” as also describing any magnetic piece 311 in the Figure 2A embodiment of Sakuma. We are not sufficiently persuaded, for institution purposes, that Sakuma discloses using “sendust” as the material for any magnetic piece 311 in Figure 2A. d) Conclusion Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 1 and 13 by Sakuma. 4. Dependent Claims 8, 9, 11, 17, 19, and 21 Claims 8, 9, and 11 each depend directly from claim 1. Ex. 1001, 10:46–61. Claims 17, 19, and 21 each depend directly from claim 13. Id. at 12:10–28. Each dependent claim incorporates all the limitations of the claim on which it depends. For the same reasons discussed above in the context of claims 1 and 13 regarding limitation 1[i] and limitation 13[j], Petitioner has not sufficiently shown that Sakuma discloses those limitations. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 8, 9, 11, 17, 19, and 21 by Sakuma. D.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,843,215

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.