- PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms.6 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,863,573 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00943 · APJ Scott B Howard · IPR · Final written decision
Claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 are unpatentable; Rao anticipates some claims, and the stated Rao combinations render the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not disputed by Patent Owner (see PO Resp.), we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. Patent Owner does not propose any claim constructions. See PO Resp. For the purposes of this Decision, we need not expressly construe any claim terms. 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 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence that claim 3 was anticipated by Rao.” slip op. at 25
Patent outcomesUS 8,589,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00942 · APJ Scott B Howard · IPR · Final written decision
Claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 are unpatentable; Rao anticipates some claims, and Rao-based combinations render the others obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not disputed by Patent Owner (see PO Resp.), we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. Patent Owner does not propose any claim constructions. See PO Resp. For the purposes of this Decision, we need not expressly construe any claim terms. 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 13
- Expert testimonyOther
“157, and 171 are anticipated by Rao. Pet. 1, 19–39, 42. Petitioner’s arguments are supported by citations to the prior art and the testimony of Dr. Wolfe. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“anticipated by Rao. Pet. 1, 30–31, 33–42. We have reviewed Petitioner’s arguments for each of those dependent claims. See Pet. 30–31, 33–42. For each of those dependent claims, the Petition appears to only argue a theory of obvious. That is, the Petition never states that the additional limitation is disclosed by Rao. See id. For example, claim 26 depends from claim 1 and further recites “wherein the policy is based on a background service class.” Ex. 1001, 112:49–52. We reproduce Petitioner’s arguments directed to claim 26 below: Rao’s policies 520 may “define prioritization” for network packets “based on whether an application is running in the foreground or the background.” [Ex. 1002] ¶ 182; id. ¶¶ 38–43, 180, 182, 188–89, 193, Figs. 5A, 5B. Each packet “may be placed and arranged in a priority order respective to all other . . . packets to provide a packet by packet prioritization across all applications 338a-338n and . . . network packets.” Id. ¶ 191. It would have been obvious to determine and apply a policy assigning a specific priority to packets associated with background applications, supra [1e]-[1f], and Rao thus discloses or renders obvious assigning a priority to network communications based on whether they are characterized as background services (class of services associated with application(s) running in the background of client 105), EX-1015 ¶¶195-96; supra [1e], [1f]. Pet. 33–34. Although the Petition sets forth why the claim limitation would have been obvious, there is no discussion as to how the additional limitation of claim 26—policy based on background class—is disclosed in Rao. See id. Similar arguments are presented for the other claims. See Pet. 30–31, 35–42. Because the Petition does not sufficiently show how the additional limitations recited in claims 20, 26, 58, 64, 165, and 169 were disclosed by Rao, Petitioner has not shown by a preponderance of the evidence that claims 20, 26, 58, 64, 165, and 169 were anticipated by Rao.” slip op. at 28
Patent outcomesUS 8,589,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Sep 3, 2025 · IPR2024-00441 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–18 are unpatentable over Kamieniecki and Konstantinos; Petitioner did not show claims 1–18 unpatentable over Renken or Renken and Cholas because Renken is not prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in The Art Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication 1 Because the challenged claims have an effective filing date before the effective date of the AIA, we apply the pre-AIA version of 35 U.S.C. § 103. 2 US 2005/0114879 A1, published May 26, 2005 (Ex. 1009). 3 US 2010/0120386 A1, published May 13, 2010 (Ex. 1010). 4 US 2010/0303181 A1, published Dec. 2, 2010 (Ex. 1016). 5 US 2008/0313691 A1, published Dec. 18, 2008 (Ex. 1017). 6 US 8,649,421 B2, issued Feb. 11, 2014 (Ex. 1011). systems,” and that “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). “Patent Owner accepts the Petition’s [description of a person of ordinary skill] solely for purposes of responding to the Petition in this proceeding.” PO Resp. 11. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we apply Petitioner’s definition in this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses and will not assist in resolving the present controversy between the parties. 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)). C.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree that the record provides sufficient evidence that one of ordinary skill in the art would have found it advantageous to add a multi-channel receiver to improve monitoring, as Petitioner argues. Having the ability to monitor without waiting for idle or disturbing users would be a clear advantage.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We conclude that Patent Owner has not shown a sufficient nexus between the claimed invention and any product embodying the claimed invention that was successful, praised, or solved a long-felt need. Patent Owner identifies five elements allegedly required “[t]o implement MaxLinear’s Remote Spectrum Monitoring in CPE.” See PO Resp. 65. To support this, Patent Owner cites pages 5–7 of Exhibit 2009. See id.7 That exhibit, however, describes requirements for “Full Band Capture,” not MaxLinear’s “Remote Spectrum Monitoring.” To” slip op. at 31
Patent outcomesUS 8,792,008 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,792,008 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Kliger identifies the problems of splitter reflections causing inter- symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Kliger and Isaksson, and separately over Amit, Jacobsen, and Isaksson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Although Patent Owner points to various parts of the ’518 patent as supporting its proposal, other parts of the patent are not so limited. For example, the ’518 patent repeatedly mentions prior art patents disclosing communication techniques applied to twisted pair wiring, including discrete multi-tone (DMT) modulation and bit loading. Ex. 1001, 3:49–50, 3:67–4:2, 8:19–26. The patent further mentions that its data network overlays cable or satellite services. See, e.g., id. at 5:1–6. Thus, a POSITA would not be limited to experience only with “coaxial cables” as opposed to work involving signal processing and/or communication systems/networks more generally. The ’518 patent describes the “Technical Field” as “broadband communication networks and specifically . . . communications using coaxial cable building wiring.” Id. at 1:25–30. We find it appropriate here to use the broader statement of “broadband communication networks” as the field of a POSITA’s experience. The challenged claims of the ’518 patent relate to a “data communication network” comprising “cable wiring” with “segments of coaxial cable.” Id. at 12:16–19. This does not mean that the “cable wiring” is strictly coaxial—only that it includes segments that are. Furthermore, the ’518 patent’s teachings are applicable to any network experiencing multipath reflections which degrade the ability to achieve high data rates regardless of the media over which those signals are transmitted. Id. at 4:19–32. Consequently, we determine the skill level as follows: A POSITA would have at least a bachelor’s degree in electrical engineering, computer engineering, or a related field and two to three years of experience working in broadband communication networks. Additional education could substitute for professional experience, or vice versa. For the foregoing reasons, our adopted skill level is consisted” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Kliger and Isaksson are analogous art to the ’518 patent because they are from the same field of endeavor as the patent—wired networking systems— and because they are reasonably pertinent to the problem at issue in the patent—overcoming wired-network signal impairments.” Pet. 27 (citing Ex. 1004 ¶¶ 76–80); Pet. Reply 3–12. Patent Owner disagrees with Petitioner’s contention that Isaksson is analogous art. PO Resp. 12–26; PO Sur-Reply 16–25. For the following reasons, we determine that Petitioner has shown by a preponderance of the evidence that Isaksson is analogous art to the ’518 patent because it is reasonably pertinent to the problems identified in the ’518 patent. The ’518 patent seeks to overcome channel impairments by using probe messages to characterize the communication channel and determine optimum bit loading. Ex. 1001, code (57). These impairments include signal reflections, ISI, and signal attenuation. Pet. Reply 9–10 (citing Ex. 1001, 3:5–19). Similarly, Isaksson estimates channel characteristics by periodic transmission of a base sync frame from one transceiver to another where it is compared with a reference frame. Ex. 1013, 10. Isaksson’s channel characteristics may include attenuation, phase shifting, and variance, which are similar to the problems identified in the ’518 patent. Id. Both the ’518 patent and Isaksson address the problem of ISI by using bit loading to transmit data using sub-carriers less affected. Ex. 1001, 3:5–20; Ex. 1013, 16, 35, 79. Hence, we find the problems identified in the ’518 patent and Isaksson of how to overcome channel impairments reasonably pertinent such that Isaksson is analogous art to the ’518 patent. We find unavailing Patent Owner’s arguments that the ’518 patent is specific to in-home networks with coaxial cables and splitters whereas Isaksson is restricted to twisted pair, point-to-point networks having no intervening devices and which are located outside of homes. PO Resp. 15– 20; PO Sur-Reply 21–24. Any such differences do not change the fundamental nature of the problems of noise and interference affecting these environments. Such differences go more toward the field of endeavor than the reasonable pertinence of the problems each address. See Pet. Reply 10 (citing Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020)). Specifically, both the ’518 patent and Isaksson address the problem of channel impairments such as interference (e.g., ISI) and noise, and use the solution of bit loading to overcome them. See, e.g., Ex. 1001, 4:42–47; Ex. 1013, 1:3–7, 6:17–20, 16:10–16, 79:5–14. Hence, we find that the ’518 patent and Isaksson are analogous art because Isaksson is reasonably pertinent to the problems addressed in the ’518 patent notwithstanding Patent Owner’s arguments. We do not reach the question of whether the two are in the same field of endeavor.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“symbol interference, external noise, and dynamic network conditions adversely affecting home network communications. Pet. 23–24 (citing Ex. 1007 ¶ 73; Ex. 1010, 5; Ex. 1004 ¶¶ 65–68). Isaksson teaches using multi-carrier modulation, such as DMT and OFDM, to address frequency dependent loss and noise using synchronized bit-loading based on carrier SNR. Id. at 24 (citing Ex. 1004 ¶ 69; Ex. 1013, code (57), 26:4–20). We agree with Petitioner that the combination of Kliger and Isaksson amounts to the use of known techniques (Isaksson’s synchronized bit-loading) to improve similar devices in the same way (overcoming interference and maintaining connections with other modems). Id. at 26–27 (citing KSR, 550 U.S. at 415–421). We do not agree with Patent Owner’s argument that Kliger already solves the issues that Petitioner identifies such that a POSITA would not have looked to Isaksson’s synchronized bit-loading. PO Resp. 50. Petitioner has established that Isaksson’s solutions would improve Kliger’s modulation by determining the number of bits-per-carrier based on SNR, disabling noisy carriers, and synchronizing bit loading. Pet. 23–28; Pet. Reply 23–24. Hence, a POSITA would have been motivated to improve Kliger with Isaksson. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a [POSITA] would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner alleges that Kliger’s network is coaxial whereas Isaksson’s is point-to-point, twisted pair with no intermediary devices such as splitters which would cause the interference, noise, and attenuation that the ’518 patent addresses. PO Resp. 50–55. However, we do not agree that these alleged differences would have precluded a POSITA from making the combination of references. “Signal impairments such as reflections, noise, attenuation, and inter-symbol interference (ISI) are common challenges in nearly all communication mediums.” Ex. 1036 ¶¶ 23–27. Communication networks experience these challenges, whether point-to-point or shared, twisted pair or coaxial, in-home or out-of-home, with or without splitters. Id. As Petitioner’s expert, Dr. Williams, puts it, “a POSITA can draw from the same toolbox of known solutions to address these impairments regardless of the medium.” Id. ¶ 27. Among those solutions is Isaksson’s approach of synchronized bit-loading. Moreover, Isaksson expressly states that “[i]t should be emphasized that the present invention can be used not only with the MUSIC system as herein described, but with other multi-carrier systems employing dynamic bit loading.” Ex. 1013, 72:5–8 (emphasis added); Ex. 1004 ¶¶ 81–82. Hence, a POSITA would have been led to consider using Isaksson’s synchronized bit-loading with Kliger’s coaxial network which uses a multi-tone transmitter to determine whether to transmit power on each particular tone. See, e.g., Ex. 1007 ¶ 166; Ex. 1013 1:1–7. Further facilitating the combination is Kliger’s disclosure of using “a regular multi-tone transmitter (either OFDM or DMT) to determine whether to transmit power on each particular tone wherein tones can be silenced (which is, in effect, a form of bit-loading). See, e.g., Ex. 1007 ¶¶ 6, 166, Fig. 1; Ex. 1013, 1:1–7, 3:24–34, 4:21–25, 16:8–12. In addition, Kliger expressly recognizes and seeks to address signal impairments caused by splitters, including poor signal isolation, return loss performance, degradation at higher frequencies, and inter-symbol interference due to reflections (the same problems the ’518 patent addresses). Ex. 1007 ¶¶ 61, 73. Accordingly, a POSITA would have been motivated to combine teachings of Kliger and Isaksson. Patent Owner argues that Petitioner did not explain how a control channel would exist across a coaxial splitter’s multipath signal. PO Resp. 56–58 (citing Pet. 26; Ex. 1013, 73:4–15, 74:22–31, Fig. 33; Ex. 2002 ¶¶ 147–148). Patent Owner does not explain why it would be necessary to use Isaksson’s control channel in Kliger, particularly when Kliger has its own control channel. Ex. 1007 ¶¶ 63–64, 166. Patent Owner’s argument amounts to bodily incorporation of Isaksson in Kliger, which is not a proper approach to obviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We further disagree with Patent Owner’s argument that Isaksson’s base sync frames (equivalent to the claimed probe messages) would not function in Kliger’s network. PO Resp. 58–60 (citing Pet. 26; Ex. 1007 ¶¶ 55–57; Ex. 1013, 24:8–28, Fig. 1; Ex. 2002 ¶¶ 149–154). Patent Owner’s arguments are directed toward an embodiment of Isaksson that Petitioner did not cite in its Petition. Pet. Reply 26. In any case, Patent Owner does not establish that using Isaksson’s base sync messages in Kliger’s system would have been beyond a POSITA’s skill. Id. at 25–26 (citing Ex. 1036 ¶¶ 90– 93). Patent Owner argues that Isaksson’s base sync frames would alter the principle of operation of Kliger because Kliger requires all devices to transmit fixed constellation size based on overall network characteristics rather than specific channel characteristics between each HNM. PO Resp. 60–63 (citing Ex. 1007, code (57), ¶¶ 40–44, 91, 99, Fig. 1; Ex. 1013, 3:24– 27, 20:24–25, 26:14–17, 78:5–79:5, Fig. 36; Ex. 2002 ¶¶ 155–157). Patent Owner has not established, however, that fixed constellation size is a “principle of operation” of Kliger, or that Kliger would require substantial reconstruction or redesign to incorporate variable constellation sizes. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We agree with Dr. Williams that a POSITA would have sought to improve Kliger with Isaksson’s techniques. Ex. 1036 ¶ 95.” slip op. at 19
Patent outcomesUS 7,295,518 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,295,518 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable as obvious, principally over Amit and Jacobsen and, for additional claims, Amit, Jacobsen, and DSL-Book; the Board did not reach grounds 1 and 2.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. Ex. 1002 ¶¶ 17–18; Ex. 2007 ¶¶ 57–58.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Amit is restricted to “single frequency” modulation. PO Resp. 52–56. As Petitioner notes, Amit describes that its HCNM modem uses a channel (e.g., DOCSIS) containing two sub-channels for upstream and downstream signals. Pet. 24 (citing Ex. 1005, 15:18–28). This meets Patent Owner’s definition for multicarrier communications as multiple subcarriers to provide communications of a single channel. PO Sur-Reply 6. We further note that the claims do not recite “multicarrier communications” so the distinction Patent Owner attempts to draw is not supported by commensurate language in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in a claim cannot be relied upon for patentability). Furthermore, even if Amit were restricted to single carrier modulation, as Patent Owner argues, Petitioner relies on Jacobsen for its teaching of multicarrier modulation. Pet. 62–66; PO Resp. 52–56. In essence, Patent Owner attacks Amit individually and does not properly consider how a POSITA would have understood the combined teachings of Amit and Jacobsen. “Non-obviousness cannot be established by attacking references individually where the [challenge] is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” slip op. at 26
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - DISH Network LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Jul 22, 2025 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–2, 4–6, 8–10, 12–14, and 16–17 as obvious over Amit and Jacobsen; claims 2–3, 7, 9–13, 15, and 17 as obvious over Amit, Jacobsen, and DSL-Book.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15
- BurdenUnpatentable
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21
Patent outcomesUS 7,594,249 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00368 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–9 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The definition of a person having ordinary skill in the art that we adopted in the Institution Decision is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Patent Owner states that it agrees with that definition, while also proposing a broader definition that includes those with other qualifications. PO Resp. 2. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence” (PO Sur-reply 3 n.6), Patent Owner does not direct us to any specific portion of the record. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Additionally, while Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. PO Resp. 2; PO Sur-reply 3 & nn. 4, 6. Dr. Akl uses Petitioner’s definition in his testimony (Ex. 1003 ¶¶ 22, 23) and Patent Owner makes no argument regarding how, if we adopted Patent Owner’s broader definition, Dr. Akl’s conclusions would be affected. Patent Owner’s use of its definition does not describe the conclusions of one “educated in general physics” differently to one of ordinary skill as defined by Petitioner. PO Sur-reply 6. Patent Owner does not present declarant testimony regarding knowledge of one of ordinary skill in the art under any definition.3 For these reasons, we maintain the definition of a person having ordinary skill in the art we adopted in the Decision on Institution: a person having ordinary skill in the art would have had experience in the hardware and software used in the field of securely transmitting and processing authorization requests over wired and wireless networks, such as requests for the processing of financial transactions, and a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have one or two years of experience with wired and wireless 3 See infra footnote 5. as financial transactions. Less experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having analyzed the arguments and the evidence cited by Patent Owner, we do not agree. We begin with the claim language, which does not further describe the two transmission channels, let alone contradict the plain meaning. Ex. 1001, 6:5–19. Dependent claims also shed no additional light. Certain claims further specify transmission-channel-related requirements: that the first transmission channel be “selected from the group consisting of wireless and landline channels” (claim 7); that the request received via the first transmission channel be “provided via the Internet” (claim 5); or that the notifying step (via a second transmission channel) comprise “sending an SMS message to the customer (claim 2). Id. at 6:20–21, 6:28–29, 6:33–35. No claims further restrict claim 1 by describing both transmission channels. Id. Claim 9 requires that the notification be “substantially concurrent,” but nothing in the record establishes that substantially concurrent authorization and notification would require non-overlapping transmission channels, or that an overlap in the transmission channels, even if it did “encumber” the authorization process with the notification process, would prevent the processes from being “substantially concurrent.” While Patent Owner presents arguments about “the gist” of the invention (PO Resp. 4) and describes “an immediate separation of the two processes” as being disclosed by Figures 1 and 2 of the ’564 patent’s specification, we do not see in the specification an indication of a special disavowal of a broader scope. See Phillips, 415 F.3d at 1316–1317; PO Resp. 13 (“The specification of the ‘564 Patent does not express any intent to impart a novel meaning to the term distinct.”). Although we agree with Patent Owner that Figure 1 illustrates transmission channels that are separate and non-overlapping, we do not see any indication that this is more than a description of preferred embodiments or that there was a limitation of the invention to these embodiments, and our reviewing court “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). The specification similarly does not support that Figure 2 is intended as limiting.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because we do not adopt Patent Owner’s construction (including considering its arguments regarding speed and security of transmissions in the ’564 patent), and instead adopt a construction encompassing overlapping between distinct transmission channels, see supra Section II.C.1, we determine that the requirement of limitation 1d that “the second transmission channel [must be] distinct from the first transmission channel” is disclosed by the different connections, different hardware elements, and independent operation of the two transmission channels identified in Horie, even though they overlap to some extent. Ex. 1006 ¶¶ 44, Fig. 1; Ex. 1003 ¶¶ 224–227; see PO Resp. 9. Lastly, Horie discloses that the authorization of a transaction occurs without requiring a response from the customer. Ex. 1006 ¶¶ 57, 58, 73; Ex. 1003 ¶¶ 232–233. For these reasons, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 was anticipated by Horie.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Obviousness Over Horie Petitioner additionally argues that each of claims 1–9 are obvious over Horie. Pet. 38–43. Because we determine that the challenged claims are anticipated by Horie, we do not address the parties’ arguments regarding those claims based on an alternate ground. See Boston Sci. Scimed, Inc. v. Cook Gp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (“We agree that the Board need not address issues that are not necessary to the resolution of the proceeding.”).” slip op. at 34
Patent outcomesUS 8,783,564 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,783,564 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–2 and 6–7 as anticipated, and claims 3–5 as obvious over Horie and Kobayashi.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. We determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction.” Pet. 8. However, Petitioner explains the term “merchant’s” recited in independent claims 1 and 6. Id.; see Ex. 1001, 5:54, 5:56, 6:52. The possessive term “merchant’s” is not followed by a subject noun. See id. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. Institution Decision (Inst. Dec. 11), Petitioner adds that Patent Owner in a related proceeding explained “the expression may refer to anything in possession of, or under the control of the merchant, as the use of the possessive form implies.” Pet. Reply 2 (citing IPR2024-00367, Paper 10 (Patent Owner Response), 4)10. This explanation accords with Petitioner’s argument that “merchant’s” includes least a “merchant’s terminal.” Accordingly, we are persuaded by Petitioner’s argument and interpret “merchant’s” as at least including a “merchant’s terminal.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We need not construe explicitly any other claim terms because doing so would not change the outcome of the analysis below. 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 12
- BurdenDecided for petitioner
“Petitioner argues that Horie anticipates claims 1 and 2. Pet. 21–30. As discussed above, Patent Owner has not presented any arguments in a Response. The burden however remains on Petitioner, so we examine the Petition’s contentions to determine if they show by a preponderance of the evidence that the claims are unpatentable. For the reasons set forth below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 and 2.” slip op. at 12
Patent outcomesUS 7,954,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,954,706
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.