- 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 - Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentablePTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8
- BurdenNot shown unpatentable
“On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11
Patent outcomesUS 7,629,634 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,629,634 - PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2024).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Feb 4, 2025 · IPR2024-01144 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because AT&T failed to show a reasonable likelihood that claims 1–22 were obvious over either Nokia and the 3GPP-Standard or Ericsson and the 3GPP-Standard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any responses thereto shows “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). Taking into account Innovative Sonic’s Preliminary Response, AT&T’s Preliminary Reply, and Innovative Sonic’s Preliminary Sur-reply, we conclude that the information 1 We do not reach whether we should exercise our discretion to deny the Petition under Fintiv because, as we explain below, we deny the Petition based on the merits. See infra Sections II.B.5 and II.C.1. presented in the Petition does not establish that there is a reasonable likelihood that AT&T would prevail in demonstrating at least one of claims 1–22 of the ’489 patent is unpatentable. We, therefore, deny AT&T’s Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the testimony of Dr. Hansen, AT&T argues the following: [a]s of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’489 patent . . . would have had a [Bachelor of Science] in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A [person of ordinary skill in the art] would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. More education may supplement practical experience or vice versa. Pet. 14 (citing Ex. 1002 ¶ 368). In the Preliminary Response, Innovative Sonic does not address AT&T’s assessment of the level of skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt AT&T’s uncontested assessment of the level of skill in the art because it is consistent with the ’489 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“issue fares no better. With one exception, Dr. Hansen, relies on the same disclosures of the Update for 3GPP TS 36.331 v.9.4.0 to support his testimony, which, as we explain above, does not account for the plain language of the disputed limitation. Compare Pet. 26–27, 43, with Ex. 1002 ¶¶ 87–90. In addition, Dr. Hansen testifies that a person of ordinary skill in the art would have understood that “the E-UTRAN configuring the UE with one or more SCells would necessarily include the configuring of at least one SCell by a source eNB to a UE.” Ex. 1002 ¶ 91 (emphasis added). But neither AT&T nor Dr. Hansen establish inherency in its obviousness analysis. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194– 95 (Fed Cir. 2014) (recognizing that “inherency may supply a missing claim limitation in an obviousness analysis,” but limiting the doctrine of inherency “only when the limitation at issue is the ‘natural result’ of the combination of prior art elements” (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Apart from the conclusory assertion above, Dr. Hansen does not identify sufficient evidentiary support demonstrating that the requirement identically recited in each of independent claims 1 and 12 of “configuring at least one SCell by a source eNB to a User Equipment (UE)” would have been the “natural result” flowing from the Update for 3GPP TS 36.331 v.9.4.0’s disclosure of the E-UTRAN configuring the UE with at least one SCell. PAR Pharm., 773 F.3d at 1195. Accordingly, we do not credit Dr. Hansen’s testimony that implicates the doctrine of inherency because it not supported by evidence of record.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, AT&T contends that “the Board does not need to expressly construe any [claim] terms to resolve the arguments presented herein” because the asserted prior art “discloses all limitations under any plausible construction.” Pet. 14 (citing Ex. 1002 (Declaration of Dr. Christopher Hansen) ¶ 456). In the Preliminary Response, Innovative Sonic “agrees with [AT&T] that no [claim] term needs to be construed.” Prelim. Resp. 4 (citing Pet. 14). For purposes of this Decision, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. 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
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,237,489 - PTAB · Oct 11, 2024 · IPR2024-00730 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 4, 5, 10, and 11 were anticipated or obvious over Lee or Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“capability to include one or both first CBs and second CBs within any one of the CBGs. Prelim. Resp. 9–10. The plain and ordinary meaning of the CB/CBG limitation, however, does not provide such a requirement. Instead, the plain and ordinary meaning of “each of the multiple CBs is included in any one of the multiple CBGs” simply requires that at least one CBG contain each CB. Although the description in the Specification of the configuration example of Figure 11(c) arguably describes the capacity of a system to include the first and second CBs in any one of CBGs, the Specification’s permissive language does not appear in the challenged claims. That description reads:” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“multiple CB/CBG limitation, we nevertheless find it necessary to construe the limitation. Upon review of the record, we construe the limitation as requiring that at least one CBG includes each of the multiple CBs. The plain meaning of “each of the multiple CBs is included in any one of the multiple CBGs” is that each CB is included in a CBG, which means that at least one CBG includes each of the multiple CBs. Further, the Specification supports construing the limitation to have this plain meaning. Figure 11 of the ’509 patent, shown below, provides a configuration example of CBGs (Ex. 1001, 23:7–8):” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“multiple CB/CBG limitation, we nevertheless find it necessary to construe the limitation. Upon review of the record, we construe the limitation as requiring that at least one CBG includes each of the multiple CBs. The plain meaning of “each of the multiple CBs is included in any one of the multiple CBGs” is that each CB is included in a CBG, which means that at least one CBG includes each of the multiple CBs. Further, the Specification supports construing the limitation to have this plain meaning. Figure 11 of the ’509 patent, shown below, provides a configuration example of CBGs (Ex. 1001, 23:7–8):” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,196,509 - PTAB · Oct 10, 2024 · IPR2024-00644 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 5, 7, and 8 were unpatentable over R2-1702708, which was not shown to be a prior-art printed publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). If the petition relies on an alleged printed publication, “at 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 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 9
§ 102 anticipationPatents in suitUS 11,134,400 - PTAB · Dec 21, 2023 · IPR2023-01046 · APJ Jean R Homere · IPR · Institution
The Board instituted IPR on claims 1–14 and 16–19 on all asserted grounds, finding a reasonable likelihood of success on the obviousness grounds based on Chalom and Aslan, with Grau or Pace for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) (2023). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute inter partes review. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. Prelim. Resp. 9. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2001 ¶ 21). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. (citing Ex. 2001 ¶ 21). We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner “agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s decision on institution.” Prelim. Resp. 9. At this stage in the proceeding, and without further argument from the parties, we determine that we do not need to expressly construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review). We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial, as permitted by our rules and binding precedent. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“related fields, in that they disclose similar techniques of using machine learning for image processing (e.g., using image data to train MLAs to correct the gaze of a video-conferencing user). Pet. 41–42 (citing Ex. 1005, 3:21–32; Ex. 1007 ¶ 24). Petitioner also contends both “Chalom and Aslan are at least reasonably pertinent to a problem identified in the ’985 Patent of high accuracy MLAs often consuming more computational resources and being slower to run, as compared to efficient MLAs tending to provide less accurate predictions.” Id. at 42 (citing Ex. 1001, 16:24–30; Ex. 1007 ¶ 45). Thus, “Chalom and Aslan are at least reasonably pertinent to this efficiency- 4 It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR, 550 U.S. at 417–18. That is, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417–18. versus accuracy problem. Id. (citing Ex. 1005, 1:16–25, 9:48–55, 10:40–60, Fig. 3; Ex. 1007 ¶ 45; Ex. 1001, 16:24–44, 17:14–17; Ex. 1003 ¶ 212). Petitioner shows sufficiently for institution that a POSITA would have been motivated to incorporate Aslan’s teacher-student architecture into Chalom’s image editing and training of its RFC to enhance the overall gains in efficiency and accuracy of the ensuing system. Id. at 42–44 (citing Ex. 1003 ¶¶ 213–222; Ex. 1007 ¶ 44). For purposes of institution, we find that Petitioner’s rationale, which is supported by the testimony of Dr. Karam, is a sufficient demonstration, at this stage, of a motivation to combine the references with a reasonable expectation of success. KSR, 550 U.S. at 417–18. However, we note that Patent Owner’s arguments may have some merit, and encourage the parties to further develop this issue at trial.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,740,985 - Unified Patents, LLC v. Flexiworld Technologies, Inc.No claims unpatentablePTAB · Nov 1, 2023 · IPR2022-00775 · APJ Christopher L Ogden · IPR · Final written decision
Claims 27 and 28 were not shown unpatentable under either § 103 ground because the petitioner did not establish that Olgaard or Acharya was prior art; the revised contingent motion to amend was dismissed as …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Freedman’s testimony, Unified argues that a person of ordinary skill in the art would have had “(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission,” where “[m]ore relevant experience could compensate for less education, and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 36–38). Flexiworld does not contest Unified’s description of the level of ordinary skill for this proceeding. See PO Resp. 8 (citing Ex. 2010 ¶ 67). Because Unified’s description is supported by uncontroverted testimonial evidence and appears consistent with the types of problems and solutions in the ’257 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:20–5:35 (“Technical Field” and “Background” sections of the ’257 patent, describing background knowledge relating to wireless content transmission between electronic devices).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Unified argues that “all terms should be given their plain meaning,” and does not propose any explicit constructions. See Pet. 8. In the context of this proceeding, Flexiworld agrees. See PO Resp. 29. We do not find it necessary to explicitly construe any terms to resolve the issues in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“2. Conclusion as to Obviousness For the reasons above, we determine that evidence independent of inventor testimony corroborates (1) a conception date no later than October 22, 2000 and (2) reasonably continuous diligence in reducing the claimed invention to practice until January 19, 2001. Having considered the evidence as a whole under a rule-of-reason analysis, we determine that Unified has not shown that the conception date for the claimed invention was on or after October 24, 2000, or that the inventors did not exercise reasonably continuous diligence during the critical period between October 24, 2000 and January 19, 2001. Unified relies on a priority date of October 24, 2000 for Olgaard and a priority date of December 22, 2000 for Acharya. See Pet. 1–2 & n.2; see also Ex. 1005, code (63); Ex. 1007, codes (22), (43). However, the corroborated conception date for claims 27 and 28 antedates the above priority dates for both Olgaard and Acharya. See supra Section III.C.1. Thus, Unified has not shown that either Olgaard or Acharya is prior art under 35 U.S.C. § 102(e) (2006). Unified provides no theory of obviousness that does not depend on either Olgaard or Acharya being prior art. See Pet. 2, 8–80.” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“claimed inventions were conceived no later than October 22, 2000, and Unified has not shown to the contrary by a preponderance of the evidence. First, we find credible Mr. Chang’s testimony that Exhibit 2013 and other related drafts, including their filenames and metadata, have not been altered. Ex. 2031 ¶ 1. We regard the metadata as the most reliable indicator of the latest date each draft was completed. Although the filename dates may differ from the metadata dates, these minor differences do not call into question the reliability of the metadata as the last date on which the drafts were modified. Most significantly, the “last modified” date for Exhibit 2013 is October 22, 2000. That the inventors produced at least three other drafts and then filed a provisional application just ten days later on November 1, 2000 further supports a conception date before October 24, 2000. Ex. 2031 ¶ 6; Ex. 2016; Ex. 2040.” slip op. at 16
Patent outcomesUS 9,836,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,836,257 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · Feb 7, 2023 · IPR2022-01257 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that Ozawa or Clanton disclosed the claimed terminal, and the dependent-claim obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Lippman’s testimony, Roku argues that a person of ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 24–25 (citing Ex. 1003 ¶ 55). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1003 ¶ 55). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 15–16. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“terminal is key to our decision in this proceeding whether to institute trial, so we need to construe the term more specifically than the district court did. Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 20. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 21. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1001, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis To show anticipation, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,447,819 - Berkeley Lights, Inc. v. The University Of British ColumbiaNo claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable because the asserted references did not establish selective recovery or a sufficient motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 3–4 (citing Ex. 2012 ¶¶ 19–20). We find Petitioner’s uncontested articulation to be reasonable in light of the subject matter involved in the ’408 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:15–2:54 (describing the field and related art as relating to the construction and use of microfluidic devices in cell culture and analysis). Thus, we adopt it for our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no terms require express construction for purposes of resolving the challenges in this proceeding.” Pet. 9; accord Pet. 12. Petitioner also notes that in the parallel district court proceedings, Patent Owner has proposed constructions for the terms chamber and retaining position that differ from Petitioner’s proposed constructions. Pet. 9–10 (citing Ex. 1013 App’x A, 1, 3 (Patent Owner’s proposed constructions); Ex. 1021, 7, 8 (Petitioner’s proposed constructions); Ex. 1002 ¶ 44). In those proceedings, Patent Owner’s proposed construction for chamber is “an enclosed space within a microfluidic device,” and its proposed construction for retaining position is “a location in the chamber at which a cell is maintained during cell culture and media exchange.” Ex. 1013, 6, 8. Although Petitioner does not contend that its arguments rely on the choice of construction for these terms, Petitioner adopts Patent Owner’s constructions for this proceeding. Pet. 11. Patent Owner does not contest these proposed constructions, or propose any other explicit constructions. See generally PO Resp. We agree with Petitioner that we do not need to construe the terms chamber and retaining position to decide the issues presented in this proceeding, and to the extent we need to interpret the meaning of any claim language, we address the interpretations below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery and briefly lists a few general techniques that might be used for either mixing or recovery, Dimov does not specifically indicate which of the techniques would be useful for recovery rather than just mixing, and Dimov does not explicitly disclose that any cell recovery would be selective. Nor has Petitioner shown that Dimov inherently discloses selectively recovering any particular cell that has been cultured and monitored, because, as Dr. Gale persuasively testifies, Dimov’s removal techniques could, as far as a person of ordinary skill in the art would have known based on Dimov’s disclosure, be merely for “removing . . . unwanted particles out of the capture chamber/trench.” Ex. 2012 ¶ 64; see also id. ¶ 63 (“Dimov . . . may suggest removing cellular materials (rather than intact cells) after capture . . . .”). In other words, given Dimov’s general focus on performing experiments within the trenches and the lack of any specific disclosure about how or why to remove cells, Petitioner has not met its burden to show that Dimov’s potential cell-removal techniques would have necessarily been based on a response of a specific cell being cultured and monitored in limitation 1D. We also agree with Patent Owner that Dimov does not disclose any specifics about how to carry out a selective cell removal based on one of Dimov’s listed techniques, such as laser tweezers. See PO Resp. 8–9. Nor does Petitioner meet its burden of showing that such a technique would have been within the ordinary skill in the art at the time of the claimed invention. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed. Cir. 2005)). Given the labyrinthine outlet channels leading from Dimov’s chambers to the common waste stream and Dimov’s lack of any disclosure of a way to identify and extract cells in the outlet streams, we credit Dr. Gale’s testimony that there would have been substantial obstacles to recovering any specific cells that had been liberated from a trench in Dimov’s device. See Ex. 2012 ¶ 63. Petitioner has not shown that a person of ordinary skill in the art would have overcome those obstacles without undue experimentation.” slip op. at 23
- Strike new argumentNew argument disregardedOther
“18 Patent Owner contends that these arguments are untimely, and we agree at least as to certain of the arguments. See Paper 27, Nos. 6, 9, 10; see Paper 28, Nos. 6, 9, 10 (Petitioner’s responses). The new arguments introduce new theories as to how to combine Park and Kovac, including additional steps or new modifications necessary for a successful combination, which could have been presented in the Petition but were not. Nevertheless, as we discuss below, we find these arguments unpersuasive. Petitioner also contends, for the first time, that a person of ordinary skill in the art would have addressed the problem of Park’s downward-forcing circulation patterns19 by starting with flow turned off and then turning on flow “after levitation begins, including after the cell has been pushed up out of a well high enough to be clear of recirculating flow lines created once it is turned on.” Pet. Reply 19–20 (citing Ex. 1039 ¶¶ 175– 177); see also id. at 22 (citing Ex. 1039 ¶ 193).” slip op. at 64
Patent outcomesUS 10,087,408 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,087,408
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.