• Google LLC v. Sandpiper CDN, LLCInstituted
  PTAB · Dec 1, 2025 · IPR2025-01010 · APJ Michael T Cygan · IPR · Institution

  The Board instituted IPR on claims 1–15 and 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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–15 of the ’322 patent. Accordingly, we institute an inter partes review of the ’322 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 10 (citing Ex. 1003 ¶¶ 61–63). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 6

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

    “On the current record, we determine that the “modified embedded resource” may be a “link.” Both Petitioner and Patent Owner point to claim 13, which explicitly states that a modified embedded resource is a link. Because claim 13 depends from claim 1, claim 1 must be broad enough to encompass a modified embedded resource that is a link. Patent Owner also points to a statement in the ’322 patent that “[t]he embedded resource is a link.” Prelim. Resp. 18 (citing Ex. 1001, 4:26–31). Patent Owner argues that every embodiment of the ’322 patent “involves embedding the ‘modified embedded resource’ in another resource when it is returned to the client.” Paper 16, 2–3. Patent Owner cites to description in the ’322 patent of a “document” or a “page” returned to the requesting client. Id. (citing Ex. 1001, 4:42–48, 7:48–55). However, claim 15 does not return the modified embedded resource to the client, only the origin system. Claim 1 recites only that the “modified embedded resource” is returned to the client device with the content resource. Neither claim 1 nor claim 15 recite returning a document or a page containing the modified embedded resource, only the modified embedded resource itself. We acknowledge some tension with the adjective “embedded,” which Patent Owner argues requires that the embedded resource be embedded in something. Paper 16, 1–3. However, the clear description of an embedded patent, more strongly guides our preliminary construction.” slip op. at 9

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

    “We are persuaded by Petitioner’s assertions for limitations [15pre]– [15a]. Dr. Mowry attests that Verna’s client browser sends a URL 28 to a content provider 22, which is then forwarded to broker 25, which selects the appropriate cache server to serve the content and returns a re-written URL to the content server that received the client request. Ex. 1003 ¶ 67 (citing Ex. 1005 ¶¶ 12, 26, 27, 37). On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API as acting as bridge establishing a connection between client and server. Ex. 2010 ¶ 50. Verma also meets Dr. Russ’s characterization of an API as “an interface that allows the client to communicate with an application executing on the server.” Ex. 2010 ¶ 50. Dr. Russ describers Verma’s broker as sending availability inquiries from the content provider (client) to servers 23 and 24 to “find out whether they currently store the requested movie file,” and provide that information back to the content provider (client). Id. ¶ 53. On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API acting as an interface that allows the client to provides availability information to the broker). Consequently, we determine that Petitioner has shown Verma to disclose limitation [15a] for purposes of institution on the current record.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,057,322
• Google LLC v. Sandpiper CDN, LLCInstituted
  PTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,924,573
• Intel Corporation v. Ax Wireless, LLCInstituted
  PTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution

  The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19

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

    “Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,212,146
• Intel Corporation v. Ax Wireless, LLCInstituted
  PTAB · Feb 21, 2024 · IPR2023-01144 · APJ Terrence W Mcmillin · IPR · Institution

  The Board instituted IPR on claims 1–8, 10–18, 20–23, 25–38, and 40 based on all petition grounds, finding a reasonable likelihood of success under § 103.

  RulingsInstitution decision

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

    “asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18

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

    “We determine that Petitioner’s showing that a person of ordinary skill in the art would have had reasons to combine the relevant teachings of Hansen and WWiSE based on the express suggestion in Hansen is reasonable and supported.” slip op. at 34

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “4. Discussion At this stage of the proceeding, the prior art status of Zhang is the only dispute between the parties as to the patentability challenge based on Zhang and Maltsev. See Prelim. Resp. 47–56. For the purpose of institution, we need not determine whether Zhang is entitled to the filing date of ’900PROV, because, as explained above with respect to the unpatentability challenge based on Hansen and WWiSE, we have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314. 37 C.F.R. § 42.108(a) (“When 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.”). The ’566 Patent also claims the benefit of the filing date of Provisional Application No. 61/235,909, filed on August 21, 2009. Ex. 1001, code (60), 1:8–18. “Petitioner does not acquiesce that the ’566 patent is entitled to the priority date of the ’909 provisional.” Pet. 1. We look forward to the development of the full trial record as to the prior art status of Zhang to the ’566 Patent. We note that, although the burden of production may shift between the parties during trial on this issue, the burden of persuasion to show that Zhang is prior art to the ’566 Patent always remains with Petitioner. See Dynamic Drinkware, 800 F.3d at 1379– 80.” slip op. at 49

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,614,566
• Intel Corporation v. Ax Wireless, LLCInstituted
  PTAB · Feb 14, 2024 · IPR2023-01143 · APJ Kristen L Droesch · IPR · Institution

  The Board instituted IPR on claims 1–6, 8–14, 16–19, 21–30, and 32, finding a reasonable likelihood of unpatentability under § 103.

  RulingsInstitution decision

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

    “Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for petitioner

    “As an initial matter, for the first time in the Sur-reply Patent Owner contends that we should exercise discretion to deny institution on the basis of the HP district court proceeding and the Acer district court proceeding. Patent Owner did not previously address discretionary denial on the basis of these district court proceedings, but instead addressed “the two parallel district court proceedings involving . . . Dell and Lenovo.” Prelim. Resp. 56; see id. at 56–57. Patent Owner’s arguments are belated and outside the proper scope of a proper sur-reply, and should not be considered. “Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 74 (citing 37 C.F.R. § 42.23). It “does not mean to proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Id. In any event, even if we were to consider Patent Owner’s belated arguments, Patent Owner does not direct us to evidence to support its argument that HP and Acer are real parties-in-interest or privies. Nor does Patent Owner direct us to evidence demonstrating any involvement or control by HP or Acer in this proceeding. Thus, HP and/or Acer’s actions, including whether they raise these same grounds of unpatentability in their respective district court proceedings, should not be imputed to Petitioner.” slip op. at 11

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

    “has shown a reasonable likelihood of establishing that (1) July 2005 WWiSE is a prior art printed publication and (2) the subject matter of claim 1 is unpatentable as obvious in view of the combination of Hansen and WWiSE. On that basis, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.16” slip op. at 38

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “Petitioner alleges and provides evidence that July 2005 WWiSE was posted to, and continuously publicly available from, sources maintained by IEEE from July, 2005, until the earliest priority date of the ’707 patent. Petitioner further alleges and provides evidence that any interested member of the public could access July 2005 WWiSE during this time period. Although Patent Owner contends that WWiSE could not have been located by a skilled artisan, Petitioner’s evidence shows that WWiSE was made available to members of the TGn Task Group of the IEEE 802.11 WLAN Working Group without any restrictions of confidentiality or limits on dissemination. And, Petitioner provides evidence that interested members of the public would have known to look for WWiSE because the proposals made to IEEE in this time frame were frequently discussed in industry publications. In addition, we note that WWiSE lists over fifty contributors that were associated with a wide variety of technology companies in this space. Ex. 1005, 2–4. The parties may want to consider during trial, and in accordance with our Rules, whether this evidences or otherwise supports public availability. We determine that Petitioner has established the public accessibility of WWiSE sufficiently for the purpose of institution.” slip op. at 22

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,584,262
• Intel Corporation v. Ax WirelessInstituted
  PTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.

  RulingsInstitution decision

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

    “titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,917,272
• Intel Corporation v. Ax Wireless, LLCInstituted
  PTAB · Feb 14, 2024 · IPR2023-01138 · APJ Terrence W Mcmillin · IPR · Institution

  The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.

  RulingsInstitution decision

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

    “asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18

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

    “Id. at 22. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 38

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

    “2022)18 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id. In the Reply, Petitioner notes that it is not a party to any proceeding brought by Patent Owner, but named Dell and Lenovo as real parties-in-interest. See Reply 1. Petitioner filed stipulations from its real parties-in-interest Dell and Lenovo, in which each of Dell and Lenovo state that they “will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Exs. 1041, 1042. Petitioner further notes that Patent Owner brought four separate district court proceedings asserting the ’459 Patent against Dell, Lenovo, as well as against HP Inc. (“HP”) and Acer Inc. (“Acer”). See Reply 1. According to Petitioner, “[t]he Sotera stipulations from Dell and Lenovo remove any overlap between the present IPR and the Dell and Lenovo litigations.” Id. Petitioner asserts, “[g]iven the Sotera 18 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf stipulations and the Fintiv Memo guidance, the Board should decline to exercise its discretion to deny institution.” Id. at 1–2. In light of the mandatory Fintiv guidance regarding Sotera stipulations discussed above, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. The Sotera stipulations filed by Petitioner’s real parties-in-interest Dell and Lenovo mitigate the concerns of potentially conflicting PTAB and district court decisions as to the disputes between Petitioner, Dell, and Lenovo, and Patent Owner.” slip op. at 53

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,554,459
• Intel Corporation v. Ax Wireless, LLC.Instituted
  PTAB · Feb 14, 2024 · IPR2023-01137 · APJ Michael T Cygan · IPR · Institution

  The Board instituted IPR on claims 1–3, 5, 7–11, and 13 on both §103 grounds, finding a reasonable likelihood that the Hansen-WWiSE combinations render the challenged claims obvious.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’449 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’449 patent on all asserted grounds of unpatentability.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp” slip op. at 7

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

    “We find Petitioner’s showing sufficient for institution. Petitioner asserts a combination of Hansen, which splits its Signal*-N field into two symbols, with WWiSE, which appends a second copy of a Signal-N field as an ER-Signal-N field. Ex. 1015 ¶ 97; Ex. 1006, Fig. 11, 69:13–18. WWiSE describes that the Signal-N-containing symbol is followed by the ER-Signal- N containing symbol, which supports Petitioner’s assertion that the combination would start with the first bits of the Signal-N header, which Hansen’s Signal-N header bits are split between two symbols, we do not agree with Patent Owner that there is no reason to split the Signal-N symbol into two symbols in the Hansen-WWiSE combination. We agree that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have found it obvious to try generating and sending two identical symbols followed by the other two identical symbols when combining Hansen and WWiSE. The application of common sense to try a limited number of known options within the technical grasp of a person of ordinary skill may indicate the obviousness of a combination. KSR, 550 U.S. at 421. When applying WWiSE’s teaching that ER-containing symbols follow non-ER symbols to Hansen’s two-symbol, non-ER Signal-N, we are persuaded by Dr. LaPorta’s testimony that a person of ordinary skill in the art would have anticipated success with either alternative 1 (NR symbol followed by same-bit ER symbol) or alternative 2 (both NR symbols followed by both ER symbols). Ex. 1003 ¶¶ 163–165. Because alternative 1 provides the order required by limitations [1J] and [1K], we determine that Petitioner has sufficiently shown its asserted combination to teach those limitations.” slip op. at 30

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

    “Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 44

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,291,449
• Intel Corporation v. Ax Wireless, LLC.Instituted
  PTAB · Feb 14, 2024 · IPR2023-01135 · APJ Michael T Cygan · IPR · Institution

  Instituted IPR on claims 1–3, 5, 7–11, and 13 based on two obviousness grounds: Hansen with WWiSE, and Hansen with WWiSE and Choi.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’361 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’361 patent on all asserted grounds of unpatentability.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-” slip op. at 43

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “shown, for purposes of institution, that each element of claim 1 has been taught or suggested by the combined teachings of Hansen and WWiSE. Further, that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the teachings of Hansen and WWiSE as suggested by Petitioner, and would have a reasonable expectation of success in doing so. On the record before us, and for purposes of institution, Petitioner has sufficiently shown that claim 1 would have been obvious over Hansen and WWiSE. 4. Claims 2–3, 5, 7–11, and 13 Petitioner provides a detailed analysis of the limitations of claims 2–” slip op. at 38

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,973,361
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoInstituted
  PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution

  The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2

  • BurdenMixed

    “Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8

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

    “Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503

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.