- Juniper Networks, Inc. v. Huawei Digital Technologies (Cheng Du) Co., Ltd.Some claims unpatentablePTAB · Jan 10, 2022 · IPR2020-01130 · APJ Nabeel U Khan · IPR · Final written decision
Claims 8 and 9 are unpatentable as obvious over Dubrovsky and Dubrovsky with Campbell, respectively; claims 1–7 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- BurdenNot shown unpatentable
“request in Petitioner’s Moshchuk-Gribble combination is a URL for an HTML root page, neither the Content-Type field of the HTTP header nor the URL extension would indicate whether the requested Web page contained executable content. PO Resp. 10–16. Dr. Davis provides credible testimony that because, in Moshchuk, the file that is provided in response to the request is an HTML root page, the HTTP header for the file would have merely indicated that the returned file is an HTML file, which is not a file type associated with being an executable, and would not have indicated whether the file contains active or passive content. Ex. 2018 ¶¶ 94–100. Similarly, Dr. Davis provides credible testimony that “[a] POSITA would have known that the URL for an HTML file would have generally included an extension of .html or .htm” and that such extensions would not have been associated with executables. Id. at ¶ 106. Thus, Dr. Davis concludes “[t]he resulting Moshchuk-Gribble combination therefore would not have been able to determine if a requested Web page was an active page or a passive page based on the analysis of the URL.” Id. at ¶ 107.” slip op. at 36
- Strike new argumentNew argument disregardedDecided for patent owner
“The contentions from the Petition, taken together with Dr. Nielson’s initial testimony and the underlying disclosure from Gribble show that the Petition relies specifically on examining Gribble’s content-type HTTP header to determine whether the associated file is an executable. Thus, we agree with Patent Owner that Petitioner’s arguments in the Reply Brief relying on file headers generally, or those relying on other types of headers, such as the HEAD section or element, or other fields of the HTTP header, such as the Content-Script-Type field, are new arguments not presented in the Petition. Because these arguments were not raised in the Petition, it is impermissible to raise them in the Reply Brief. See Consolidated Trial Practice Guide3 at 73–75.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the evidence of record and the parties’ arguments, we are persuaded by Petitioner that the Dubrovsky-Campbell combination teaches the limitations of claim 9. Initially, we note that we agree with Petitioner that one of ordinary skill would have been motivated to look to known ways of identifying file types, such as Campbell’s method of examining the file extension and the file header. We give credit to Dr. Nielson’s testimony in this regard that both Dubrovsky and Campbell recognize that executables were a frequent source of malware but that Dubrovsky does not provide specific details regarding how a file would be determined to be executable. Ex. 1005 ¶¶ 404–405. Because Campbell does provide these details, Dr. Nielson credibly testifies that a person of ordinary skill would have been motivated to combined Campbell’s techniques of identifying executables with Dubrovsky. Ex. 1005 ¶¶ 404–406. We agree with Petitioner that Campbell teaches that a file’s header can be used to determine that the file is an executable. Campbell teaches that spyware contains certain patterns that can be used to identify the nature of the file. Ex. 1013, 5:9–12. Campbell provides an example of a .CAB file that includes a header having a certain format. Id. at 5:12–13. Campbell explains that spyware scanners have access to spyware signature lists that can be compared with characteristics of spyware headers to identify spyware so that the spyware can be blocked. Id. at 13–24.” slip op. at 61
Patent outcomesUS 10,027,693 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,027,693 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01161 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Philipp and QT60161.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161. 4. Claims 2–20 Because Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’251 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision whether to institute an inter partes review “requires a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every” slip op. at 18
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implement these functions with a touch screen and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen’ pursuant to the touch screen teachings of QT60161.” Pet. 36.9 More specifically, Petitioner argues that it would have been obvious to apply the timed features of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to Petitioner, a person having ordinary skill in the art would have made such a combination because (1) “the primary timer-based functions described and claimed in the ’251 Patent are not only compatible with the touch screen described in QT60161, but are expressly discussed in QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61– 7:2; Ex. 1017, 7)), 9 The Petition emphasizes the names of prior art references. The emphasis is omitted throughout this Decision. (2) QT60161 and Philipp “are compatible with the same sensor technology” (id. at 31; see also id. at 31–32 (citing Ex. 1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex. 1028, Figs. 1b, 7)), (3) both the ’251 patent and QT60161 are directed to saving power after the passage of time (id. at 32–33 (citing Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97– 103)), and (4) implementing Philipp “with QT60161’s touch screen would have yielded predictable results” (id. at 33 (citing Ex. 1003 ¶¶ 97–103)). After reviewing Petitioner’s arguments and information, including the Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“In evaluating the effective filing date of the ’251 patent, we first address the parties’ respective burdens. In an inter partes review, Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also establishes that Petitioner has the initial burden of production to show a reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id. The Board then evaluates all of the evidence and determines whether Petitioner has satisfied its burden of persuasion regarding unpatentability. Id. We apply the same framework when considering whether the parties have met their respective burdens at this stage of the proceeding. (2) Application of Dynamic Drinkware Based on the current status of the proceedings, we are sufficiently persuaded that Petitioner satisfied its initial burden of production under Dynamic Drinkware. Specifically, Petitioner identifies two claim terms— “touch screen” and “key touch on a/the touch screen”—that are recited in each of the independent claims and were added to the ’274 application. Pet. 10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as discussed below, Petitioner has also sufficiently shown that the combination of Philipp and QT60161 teaches each of the limitations of the claims of the ’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner satisfied its initial burden of production by arguing that the prior art rendered the claims unpatentable). Because Petitioner satisfied its initial burden of production, the burden of production now shifts to Patent Owner to argue or produce evidence that either (1) the prior art does not render the claims unpatentable or (2) that Philipp is not prior art because the asserted claims of the ’251 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner—as is its right—chose not to file a Patent Owner’s Preliminary Response, for purposes of institution only, Patent Owner did not meet its burden of production to show that the ’251 patent is entitled to a filing date earlier than Philipp.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. 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))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - PTAB · Dec 13, 2021 · IPR2021-01128 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, and 14–19 on all petitioned grounds, after finding a reasonable likelihood of success on the § 103 grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the same articulation of the level of ordinary skill in the art that the Administrative Law Judge adopted in the related ITC proceeding, which is as follows: one of 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 experience in the research, design, development, and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl. ¶ 30. This articulation of the level of ordinary skill is consistent with the problems and solutions in the ’173 patent and the prior art of record. Therefore, we adopt the proposed articulation of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Although a number of ’173 patent claim terms have been construed in the related ITC proceeding, Petitioner contends that we do not need to explicitly construe any claim terms. Pet. 6–7. In particular, the constructions for the selected terms in the related ITC proceeding are as follows, according to Petitioner. Term Construction a sensing element that com-a physical electrical sensing element prises a sensing path that com-made of conductive substances that prises a length comprises a path for sensing that is determined for each use that com-prises a length object either an inanimate object, such as a wiper, pointer, or stylus, or alterna-tively, a human finger or other ap-pendage any of whose presence ad-jacent the element will create a lo-calized capacitive coupling from a region of the element back to a cir-cuit reference via any circuitous path, whether galvanically or nongalvanically displacement distance and direction of movement Pet. 6−7. Petitioner does not dispute these constructions (id.), which we find reasonable at this juncture. Therefore, we preliminarily adopt these constructions for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At our discretion, we may 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). Applying that standard, we institute an inter partes review of all asserted grounds and all challenged claims of the ’173 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record, including any timely response by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Further, to the extent the range of parameter values is not expressly or inherently taught by Trent, Petitioner argues that it would have been obvious to set a parameter to an initial value within a range that is associated with the length of the sensing path. Id. Relying on testimony of Dr. Bederson, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the volume control knob of Trent’s Figure 36 (reproduced above in our overview of Trent) with functionality that sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005 ¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent identifies, as part of the prior art “solutions” to the problem of the invention, a two-dimensional sensor in which users can slide their fingers to generate scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a person of ordinary skill in the art would have understood that such a sensor would set a parameter to an initial value as recited in the claims. See Bederson Decl. ¶ 93. We find Petitioner’s arguments, and Dr. Bederson’s supporting testimony on the above points, sufficiently persuasive at this preliminary stage to show by a reasonable likelihood that Trent discloses or teaches the Setting Parameter Limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,432,173 - Google LLC v. Traxcell Technologies, LLCInstitution deniedPTAB · Dec 7, 2021 · IPR2021-01004 · APJ Norman H Beamer · IPR · Institution
The Board denied institution on claims 1–30 because Google did not show a reasonable likelihood of prevailing on any challenged obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing on any challenged claim. Accordingly, we do not institute an inter partes review of any claim of the ’196 patent. The Petition is denied.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Nonetheless, we are not persuaded that Petitioner has sufficiently articulated reasoning with rational underpinnings for the proffered combination, as required by KSR. Contrary to Petitioner’s assertion, it is not the case that “the identification technique disclosed in Hancock necessarily includes a determination of whether the device type is fixed or mobile.” Pet. 15. Rather, each separate embodiment of a portable computing device used in the Hancock system has an automatic location identification (ALI) device that is specifically designed for that device. Ex. 1005, 23:51–24:4 (describing “ALI Example I” and “ALI Example II” for cellular devices, and an additional example for land-line telephone devices). There is no suggestion of providing, for any of Hancock’s devices or server, the capability to determine whether the device is fixed or mobile, and Hancock suggests no reason to have that capability. Each device has its own ALI that is specifically designed for that device. Because we find insufficient factual support for Petitioner’s basic premise, that “the identification technique disclosed in Hancock necessarily includes a determination of whether the device type is fixed or mobile,” the rationale for the combination fails scrutiny. Even though Karp discloses a step in which a server determines whether a communicating device is a cell device, there is no persuasive reason in the present record why one of ordinary skill would have considered that pertinent to Hancock.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claims need be expressly construed.” Pet. 2. Patent Owner does not propose any constructions of the claims for purposes here. Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - PTAB · Dec 1, 2021 · IPR2021-00943 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 5–9, 11, 12, 16–20, and 22 based on a reasonable likelihood that the combination of the 300 reference, the 321 reference, and Ericsson renders claim 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petition is not materially different from the prior art presented to the Examiner because the basis for the sole challenge in the Petition is a combination of references listed in the IDS. Pet. 3–4. Thus, we determine that the Petition uses “the same or substantially the same” art compared to what was previously presented to the Office, which satisfies part one of the framework. See Advanced Bionics, Paper 6 at 8. 2. Part Two of the Advanced Bionics Framework Under part two, we must determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. at 8. For the reasons discussed in this section,” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Yet Patent Owner does not provide a basis for its definition. By contrast, Petitioner’s definition is supported by the Min declaration. See Pet. 12 (citing Min Decl. ¶ 34). Also, Patent Owner does not specifically explain how its proposed definition affects Petitioner’s obviousness analysis. See Prelim. Resp. 36. Rather, Patent Owner argues “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness.” Id. Considering the types of problems and solutions described in the ’120 Patent and the cited prior art, we preliminarily agree with Petitioner’s proposed definition of the level of ordinary skill in the art. Pet. 12. During trial, however, the parties are encouraged to explain how the differences between Patent Owner’s proposed definition and Petitioner’s affect the obviousness analysis.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Rather, Petitioner’s “only when” construction is adequately supported on this record. Pet. 12–13. Specifically, we preliminarily agree that the first “transmitting” step appears to be independent of the later three “transmitting” steps. Id. at 13. The later three steps cover the potential scenarios other than the first transmitting step in which the UL Grant is that the claimed user equipment must transmit one of the Msg3 buffer data or new data—not both. See id. In this way, the claim language adequately supports Petitioner’s assertion that the “when” clause in the first transmitting step introduces a necessary condition, at this stage and on this record. See id. at 13–14. Thus, we adopt Petitioner’s “only when” construction for the purpose of determining whether to institute. See id.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“Patent Owner’s argument, though, does not fully address Petitioner’s obviousness rationale, which relies on the 321 reference as well as other teachings from several other sources. See Pet. at 32–37. At this stage, we preliminarily agree with Petitioner that the 321 reference does not state what happens if a UE receives two uplink grants during an ongoing random access procedure. Id. at 31. Petitioner asserts that it would have been obvious to transmit Msg3 only when there was Msg3 data to transmit and the UE had received an uplink grant in a random access response. Id. at 33. To be sure, Patent Owner does address Petitioner’s obviousness rationale by arguing that it is based on improper hindsight. Prelim. Resp. 34– 37. Patent Owner argues that Petitioner’s “suggestion that a POSITA would find the solution to the problem of improper transmission of Msg3 data obvious in view of the then-existing draft of the LTE standard is incorrect.” Id. at 34. Patent Owner argues that “[b]y claiming that there was no problem to be solved and that the draft LTE standard already addressed the potential for erroneous Msg3 data transmission, [Petitioner] essentially argues that the inventors and the LTE Working Groups did not know how the standard and based on improper hindsight. Id. at 36–37. At this stage, we determine that Petitioner’s obviousness rationale is adequately supported by the preliminary record: The 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003, § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an uplink grant in a random access response and calls the C-RNTI grant the uplink grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. In at least this way, the 321 reference supports Petitioner’s reasoning. See Pet. 32. Petitioner’s obviousness rationale is further supported by the 300” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,517,120 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-00950 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 18–20, exercising § 314(a) discretion under Fintiv because the ITC investigation was advanced and the preliminary merits were a closer call.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In evaluating whether to do so, we consider the following factors in assessing “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“B. Analysis Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (2018) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . 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”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). The advanced state of either a parallel district court action or a parallel ITC investigation may warrant exercising discretion on behalf of the Director to deny a petition for inter partes review. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner contends that Nokia discloses, “in the context of the disclosed handover operations, performing a contention free . . . RACH procedure (step 5 [of Nokia’s Figure 1]), wherein the identifier information necessary for the UE to communicate with the target base station during the RACH procedure was previously transmitted in a message from the source base station to the UE (e.g., Handover Command, Step 4).” Pet. 31 (citing Ex. 1037 ¶ 92). Petitioner motivates its reasoning for effecting a combination of Nokia with Hu by contending that a person of skill in the art “would recognize that the specific implementation of such a conventional, contention free RACH procedure as referenced in Nokia could be implemented using” a variety of known methods. Id. at 33. Such a person “would also have recognized,” Petitioner further contends, “that using conventional RACH procedures wherein each UE is assigned and uses its own different preamble would make the handover process quicker and more efficient by reducing contention between the mobile station and the other mobile stations on the RACH.” Id. Petitioner relies on such features to argue that “Hu discloses the full implementation level details of how such a conventional, contention free RACH procedure using allocated resources in the form of a dedicated code resource (i.e., a dedicated preamble) is performed.” Id. Patent Owner disputes Petitioner’s reading of Nokia, particularly that it discloses a contention-free RACH procedure. See Prelim. Resp. 36–43. Patent Owner correctly observes that the timing alignment in step 5 of Nokia’s Figure 1 “involves one of two different procedures: a ‘one or two step RACH procedure’ OR a ‘Non contention based access burst.’” Id. at 37. Patent Owner elaborates that, although Nokia teaches that the “UE receives allocation(s)” that can be used in an access burst in the second of these procedures, Nokia “does not even teach what an ‘access burst’ is or how it would be used in a non-contention-based manner—and certainly does not teach or suggest that the non-contention-based manner would involve a RACH procedure.” Id. at 38. Patent Owner further supports its position with “[o]ther contemporaneous submissions by Nokia [that] confirm this and explain what Nokia meant by a contention-free access burst procedure,” as well as LTE standards documents. Id. at 38–43 (citing Ex. 2009, 1–2; Ex. 2010 § 10.1; Ex. 2011 § 10.1.2.1; Ex. 2012 § 10.1.2.1). We have reviewed this evidence, and find on this record that it provides some support for Patent Owner’s position. The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv.” slip op. at 18
§ 103 obviousnessDiscretionary denial - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00883 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–9, 11–20, 22–28, and 30 based on the §103 ground over Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’192 patent issued was filed after that date, with no benefit claim prior to that date, the AIA version of § 103 applies. 4 Ji et al., Chinese Patent Application Publication No. CN 105553834 A, published May 4, 2016 (Ex. 1005 (original publication), Ex. 1006 (certified English translation), “Ji”). 5 Sarafa et al., Published U.S. Patent Application No. 2018/0159812 A1, published June 7, 2018 (Ex. 1007, “Sarafa”). 6 Oh et al., Published U.S. Patent Application No. 2014/0143684 A1, published May 22, 2014 (Ex. 1008, “Oh”). directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s arguments about the meaning of “reference” are more correct. Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). At the same time, we find one aspect of Patent Owner’s arguments regarding the construction of “reference” warrants some discussion. To the extent that Patent Owner views the term “reference” as coextensive with the term “link,” we have reason to believe the scope of the term “reference” may differ from the scope of the term “link.” As Patent Owner observes, the ’192 patent discloses “[b]y ‘reference’ what is meant is that there is a connection between the second message and the first message. The connection may be for example a link.” Ex. 1001, 4:25–27; Prelim. Resp. 14. Even if this disclosure indicates that a link is a type of reference, it does not say that every reference is a link. Indeed, the ’192 patent’s disclosure of “a (reference) object . . . that links or otherwise references a chat message” may suggest the terms “link” and “reference” are not coextensive. Ex. 1001, 3:26–29. For example, this disclosure may suggest that a reference can be but need not be a link. The parties are asked to address this observation during the trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Additionally, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for modifying Ji’s system to use a reference in the manner disclosed by Sarafa. Pet. 14–18, 20–24, 50–53. Similarly, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for combining the cited portions of Oh’s disclosure with the disclosures of Ji and Sarafa. Id. at 18–20, 24–26, 38–44. At this stage, Patent Owner does not dispute that it would have been obvious to combine the cited portions of the disclosures of Ji, Sarafa, and Oh. Furthermore, we find a reasonable likelihood that Petitioner will establish that the allegedly obvious combination of Ji’s, Sarafa’s, and Oh’s disclosures would have resulted in a messaging system implementing a reference in all the ways recited in the challenged claims. At this stage, our review of the record does not reveal an apparent distinction between the challenged claims and a system that would have resulted from combining the disclosures of Ji, Sarafa, and Oh in the manner proposed by Petitioner. Here again, Patent Owner does not address Sarafa, Oh or the proposed combination of their disclosures with Ji; Patent Owner only argues Ji does not disclose a reference. In sum, based on the proposed combination of the references’ teachings, Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness assertions, even if Ji does not disclose a reference.” slip op. at 37
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,728,192 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00882 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–23 on both obviousness grounds: Ji and Sarafa, and Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 12–13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s proposed construction of “link” is more accurate. Additionally, there is presently no dispute regarding the claim language “changing display of information.” Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentablePTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for patent owner
“B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21
Patent outcomesUS 9,207,143 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,207,143
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.