- AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision
The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26
Patent outcomesUS 10,841,958 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,841,958 - Gaf Materials LLC v. Kirsch Research And Development, LLCAll claims unpatentablePTAB · May 24, 2022 · IPR2021-00192 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–33 are unpatentable: claims 1, 8–12, and 19 are anticipated by Lou; the remaining claims are obvious over the stated Lou-based combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patent. See Phillips, 415 F.3d at 1315–17. The term “extrusion lamination” does not appear anywhere in the ’482 patent outside of issued claim 1, but our understanding is supported by the prosecution history of the ’482 patent. Claim 1 as originally filed in the application that issued as the ’482 patent recited, in relevant part, “a reinforcing scrim of interwoven strands for supporting tensile forces in multiple directions; and at least one layer of thermoplastic material affixed to a side of the reinforcing scrim for providing a weather-resistant barrier.” Ex. 1002 (’482 patent prosecution history), 33. In response to a rejection of the claims as anticipated by U.S. Patent No. 5,523,357 to Peterson, describing a rubber mill calendering process, the applicant amended claim 1 to add the phrase “by extrusion lamination.” Id. at 71, 76. We find nothing to suggest that a person of ordinary skill in the art would have understood that amendment to add a requirement of an additional layer of thermoplastic material, separate and apart from the “at least one layer of thermoplastic material” already recited in the original claim, to serve as a binder between the scrim and the original layer of thermoplastic material. The applicant explained in remarks accompanying the amendment, “Peterson fails to disclose forming a thermoplastic layer over the reinforcing scrim by an extrusion lamination process.” Id. at 71 (italics, underlining, and capitalization omitted). We, thus, find that the added phrase specifies how the recited “thermoplastic material” must be “affixed” to “the side of the reinforcing scrim,” but does not alter the recited function of the thermoplastic material, namely, “for providing a weather-resistant barrier.” Although the applicant’s remarks further state that “[c]ontrarily [to the rubber mill calendering process of Peterson], the roofing underlayment of the present invention is formed by an extrusion lamination process which bonds the various layers together, including the pre-formed films, reinforcement scrim, and slip-resistant material” (id.), claim 1 does not recite “pre-formed films” or “slip-resistant material”; such additional layers are recited in dependent claims 5 (“metallized film”) and 2 (“layer of slip-resistant material”), respectively (Ex. 1001, 6:29, 6:37). Looking finally to the extrinsic evidence of record, including the testimony of the parties’ experts and other exhibits filed by the parties, we find no persuasive evidence to show that the recitation of extrusion lamination requires an additional layer in addition to the recited scrim and the at least one layer of thermoplastic material affixed to a side of the scrim. In that regard, notwithstanding Patent Owner’s contentions, we are not persuaded that “extrusion lamination” and “extrusion coating” are mutually exclusive. Rather, we credit Mr. Kaczkowski’s testimony that extrusion coating would also be considered “extrusion lamination” if, for example, it “results in the extrudate being permanently bonded to the substrate.” Ex. 2020, 28:17–20. While Patent Owner argues that Mr. Kaczkowski’s statement “is nothing more than restatement of the extrusion coating process,” and “[t]o think otherwise would require believing that ‘extrusion coating’ involves a thermoplastic layer that is extruded, and thus coated, onto a substrate with the result being that it is not permanently bonded, i.e., it will delaminate from the substrate” (PO Sur-reply 5), we disagree with Patent Owner’s further contentions that “[s]uch a product makes no sense” and “[u]nder Petitioner’s theories, the [prior art] would not work” (id.). Although there could indeed be extrusion coating processes that would result in coatings that are not permanently bonded, it does not follow that the cited prior art used such processes. Further, although a laminate may be affixed to substrate by an adhesive or other binder, we find no persuasive evidence in the record that the binder must be a separate layer from the laminate.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“the “reinforcing scrim of interwoven strands” recited in claim 1 and Lou’s polypropylene polymer 2 to the recited “thermoplastic material.” Id. at 22– 23. Petitioner further contends that Lou discloses “affixing the thermoplastic material by extrusion lamination,” citing Lou’s disclosures that “[e]xtruder 20 supplies polypropylene polymer 2 through a slit orifice to deposit a thin continuous coating on the surface of sheet 1” and that coated sheet 3 is pressed by a calendaring nip formed by heated and unheated rolls. Id. at 23 (quoting Ex. 1005, 2:34–44) (citing Ex. 1003 ¶ 19; Ex. 1005, 2:45– 49).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Having considered the parties’ respective arguments, we find that Petitioner’s contentions are supported by the evidence of record, and we find that Petitioner has articulated sufficient reasoning with rational underpinnings (including support both from the cited prior art and from Mr. Kaczkowski’s testimony) to combine the relevant teachings of Lou and Goodacre. We disagree with Patent Owner’s suggestion it is insufficient that Mr. Kaczkowski opined that a person of ordinary skill would have evaluated the proposed combination based on the combined teachings of the asserted references. As the Supreme Court has explained, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR, 550 U.S. at 421. Patent Owner does not dispute Goodacre’s teachings or that combining those teachings with Lou would increase the tensile strength of Lou’s underlayment, but appears instead only to fault Mr. Kaczkowski for not determining whether those solutions would be less expensive than other alternatives. Such arguments are not persuasive. Although, as cited above, Petitioner alleges in the Petition that a skilled artisan would have recognized cross-lamination as “a simpler, less costly way to manufacture a nonwoven reinforcing scrim . . . consistent with Lou” (Pet. 37), we find that is only one among several reasons identified by Petitioner and Mr. Kaczkowski for the combination (see, e.g., id. at 34–35 (additionally identifying increased tensile strength as a well-known benefit of orienting polyolefin fabric)), each of which is independently persuasive.” slip op. at 53
- ExcludeMotion to exclude, grantedGranted
“Motion to Exclude. Federal Rule of Evidence 801 defines “hearsay” as a “a statement that: (1) the declarant does not make while testifying in the current trial or hearing; and (2) a party offers in evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid. 801(c). We agree with Petitioner that Patent Owner is offering Dr. Reitman’s testimony for its truth. As Petitioner points out, Dr. Reitman’s testimony is presented in the Patent Owner Response in alleged support of Patent Owner’s argument. See Reply Mot. Excl. 1 (citing PO Resp. 22 (“Maureen Reitman recognized that ‘extrusion coating’ and ‘extrusion lamination’ were two different processes”; “[A]s Ds. [sic] Reitman recognized, a POSITA would understand ‘extrusion coating’ to be different than ‘extrusion lamination.’”)). Further, Rule 802 provides that hearsay is not admissible unless a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court provide otherwise. Fed. R. Evid. 802. We agree with Petitioner that no exception or exclusion applies in this case. Mot. Excl. 1. Although, as Patent Owner contends, Federal Rule of Evidence 703 provides that “[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed,” and that “[i]f experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted,” we are not persuaded that opinions of others offered in litigation are the sort of “facts or data” that experts in the field of roofing underlayments would reasonably rely on in forming their own opinions.” slip op. at 64
Patent outcomesUS 6,308,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,308,482
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.