- PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand
On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232 - PTAB · Mar 2, 2023 · IPR2021-01483 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–18 are unpatentable; the revised motion to amend and both parties’ motions to exclude are denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 10
- 112 supportMotion to amend, deniedDenied
“to . . . introduce new subject matter.” 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii); Lectrosonics, Paper 15 at 6–7. Accordingly, “the Board requires that a motion to amend set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this requirement, Patent Owner must cite “to the original disclosure of the application, as filed, rather than to the patent as issued.” Id. at 8.” slip op. at 56
- ExcludeMotion to exclude, deniedDenied
“insufficiency in its showing that these documents are prior art is a legal determination to be made by the Board, and is not proper for a motion to exclude. Pet. Opp. PO Mot. Excl. 4 (citing Chicago Mercantile Exchange Inc. v. 5th Market, Inc., CBM2014-00114, Paper 35, at 52 (P.T.A.B. Aug. 18, 2015) (“a motion to exclude is not the proper vehicle to challenge the sufficiency of the evidence used to demonstrate that [an item] qualifies as a prior art printed publication . . .. Whether a reference qualifies as a printed publication . . . is a legal conclusion based on underlying factual determinations” and thus “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude”).” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“claims 11, 17, and 18. Resp. 10 n. 2. We determine that Petitioner has shown the limitations of claims 11, 17, and 18 to be taught by the abovementioned portions of Chang and Geeks, and that a person of ordinary skill in the art would have reason to combine the references with a reasonable expectation of success. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 11, 17, and 18 are unpatentable.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 9,848,295
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.