- PTAB · Oct 28, 2024 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Valve would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. 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). We consider prior art references “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 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user.” Prelim. Resp. 13 (citing Ex. 2001 ¶ 33). Patent Owner also argues that formal education could substitute for practical experience, and vice versa. Id. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision because it is sufficiently persuasive to meet Petitioner’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we disagree with Patent Owner that the term defining in claim 1 requires that the recited position and range information must be user-modifiable. Although claims 8 and 15 (not claim 1) recite a “program comprising instructions for . . . defining position and range information,” nothing in these claims explicitly requires that this program has any interaction with a user. Ex. 1001, 14:24–25, 14:64–65. Also, although the ’907 patent disclosure refers to computer architecture components for rendering a haptic effect within a boundary range, Patent Owner has not pointed to any disclosure in the ’907 patent suggesting that range settings must be user-modifiable. The ’907 patent does refer to “trigger data” that is “based on user input data,” but this trigger data appears to be collected by firmware, suggesting that the user’s involvement in creating trigger data consists of simply pulling or pushing the triggers of the controller. See Ex. 1001, 7:1–6, 8:10–16 (trigger data is “received from [the] controller . . . by peripheral firmware”), 8:58–65 (trigger data is obtained from potentiometers in the controller and sent to peripheral firmware), Fig. 3 (showing “[t]rigger data” 323 as part of peripheral firmware 320). Further, the ’907 patent discloses that the primary and secondary ranges at least “may be fixed or variable.” Ex. 1001, 5:29–30. This suggests that an embodiment in which all the range information is fixed (i.e., unalterable by a user) would be within the scope of the claimed invention. As to Patent Owner’s argument that defining would exclude something that is pre-defined, Patent Owner provides no evidence of this in the ’907 patent, its prosecution history, or extrinsic evidence. We find the proposition that something “pre-defined” is not “defined” illogical, and we” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. 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). We consider prior art references “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 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - 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 - Google LLC v. Safecast Limited LLCAll claims unpatentablePTAB · Oct 3, 2024 · IPR2023-00652 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–4, 6–9, and 12–15 are unpatentable as obvious over Plotnick and Parekh; the Board did not reach the Plotnick-only ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an artisan of “ordinary skill in the art would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent education or work experience, and at least two years of work or research experience in multimedia systems.” Pet. 8–9 (citing Ex. 1002 ¶¶ 41–45). In the Preliminary Response, Patent Owner “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’302 Patent as well as the asserted prior art.” Prelim. Resp. 8. Patent Owner does not address Petitioner’s proposed level of skill in the Response. See Reply 1; see generally Response. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art. As Patent Owner argues, Petitioner’s proposed art and ’302 patent specification, except that we delete the qualifier “at least” to eliminate vagueness as to the stated amount of experience.” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Petitioner persuasively explains further as follows: By the 2000s, the V-chip was known by POSITAs, and even in mainstream media, as a technology that would enable parents to program restrictions in their TVs to block offensive content from being played to their children. [Ex. 1040] ¶226. Thus, the motivation to reduce the risk of minors being exposed to inappropriate content was well-known by POSITAs at the time of the invention. Ex-1040 ¶227. This motivation applied equally, if not even more so, when PVR technology made it possible to record content for time-shifted viewing and thus made it possible to record late night content and for playback during the day. Ex-1040 ¶227. Plotnick itself describes that “the relative appropriateness of the prepared ad schedule may change as circumstances change” and that “[s]uch circumstances may include, but are not limited to, the time of day, program or type of program being watched channel selection, identity of the current viewer, and timing/duration of the upcoming avail.” Ex- 1006 ¶51 (incorporated by reference into Ex-1005 ¶¶2–14, 36, 194); Ex-1040 ¶227. Plotnick thus teaches and provides a motivation to ensure that time-shifted advertisements are appropriate for the time of day that they are played, including considerations based on the identity of the viewer. Id. And a POSITA would have looked to common standards, including local broadcasting regulations, to determine what timing and general public as appropriate. Ex-1040 ¶228. Reply 14–15. As Petitioner shows, Plotnick, viewed through the lens of a person of ordinary skill in the art aware of well-known program restrictions to block offensive TV content from children, teaches restricting time-shifted viewing of inappropriate ads based on the time of day and identity of the viewer in order to comply with local regulations, thereby further suggesting implementing Parekh’s FCC time restrictions. Accordingly, as outlined above, the record supports Petitioner’s showing based on the combined teachings of the references.” slip op. at 35
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board own§112(f) appliesDecided for petitioner
“claims 1 and 12, Petitioner contends that the corresponding structure is “hardware and/or software arranged to perform steps 102, 104, and 112 of FIG. 8 of the ’302 Patent, as described at 6:40–62 and 7:17–27 of the specification.” Pet. 16–17. Tracking the claim language in limitations 1.e.1 and 1.f, Petitioner identifies the recited function of the “control means” as follows: (1) “to read said first field and said clock signal and said rules database”; (2) “to apply said local broadcasting time regulation to each advertisement before said advertisement is shown”; and (3) “to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing.” Id. at 16. However, steps 102, 104, and 112 of Figure 8 represent structure do not clearly link to recited functions (1)–(3) of the control means. First, steps required by claim 1. See Ex. 1008, Fig. 8 (Step 102 describing a “mix of adverts”; step 112 describing “record any key depressions”), 7:17–17 (describing other functionality not required by the claim 1). Second, to the extent the process flow of Figure 8 also represents some algorithmic structure, it is unclear how much of any such structure clearly links to the recited functions of claim 1––as opposed to the unclaimed functionality described in Figure 8. As we did in the Institution Decision, we construe the corresponding structure of the control means as PVR hardware and/or software arranged to perform the recited functions of (1) to read said first field and said clock signal and said rules database; (2) to apply said local broadcasting time regulation to each advertisement before said advertisement is shown; and (3) to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing. See Inst. Dec. 12. It is uncertain whether the specification clearly links specific hardware and/or software to these claimed functions, other than generally disclosing a PVR, which Petitioner also points to as corresponding structure. See Pet. 17 (pointing to the disclosed PVR as performing disclosed steps 102, 104, 112); Ex. 1001, 4:43 (describing “a PVR 60 for use in a system according to the invention” according to Figure 4 (described above)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“asserting that Plotnick does not teach a first field with “a local broadcasting time,” “the time of day at which said advertisement may be shown,” or similar specific language, limitation 1.c.1 does not require such specificity. PO Resp. 10; Sur-reply 5–6, 18.5 Rather, limitation 1.c.1 recites “a header comprising a first field related to a local broadcasting time regulation,” as Petitioner argues. See Reply 5. Like the claim language, the ’302 patent specification also does not support Patent Owner’s narrow claim construction requiring a specific form of a time of day restriction in the header’s first frame. The specification generally states that “[e]ach advert . . . contains a header . . . which records . . . any restriction on the time of day at which it may be viewed.” Ex. 1001, 3:67–4:24 (emphasis stated). It also generally states that “[t]he time of day 5 The Response at page 10 obliquely slips in what appears to be a claim construction argument in one sentence and the Sur-reply adds pages to expand the argument. Compare Response 10 (possible claim construction argument) and Reply 5–6 (refuting Patent Owner’s argument by relying on “the words of the claims), with Sur-reply 4–6 (expounding on the claim construction argument), 15–19 (similar). regulations.” Id. at 3:14–15 (emphasis added). In any event, even if these embodiments specify a certain form for the time of day information or restriction (they do not), limitation 1.c.1 is broader than these embodiments because it does not require storing a specific form for a time of day restriction or information in the first header frame either directly or by implication. The Sur-reply points to Table 1 of the ’302 specification, but Table 1 lists several items, including a “Field Name” that includes “Warnings,” namely, “Keywords to match against viewing regulations.” See id. at 4:1–22 (Table1, “Fields in advertisement headers”); Sur-reply 5–6 (arguing without support that “claim 1 requires the ‘first field’ to have ‘a local broadcasting time’ of the advertisement which is regulated by the ‘local broadcasting time regulation’), 18 (arguing that (1) “[n]either Parekh nor Plotnick discloses ‘the metadata of an advertisement includes the local broadcasting time regulation,’” and (2) “‘the time of day at which said advertisement may be shown’ is not included in the metadata of the combination of Plotnick and Parekh.”).6 Patent Owner appears to rely on the disclosure of the “Time of Day” Field Name in Table 1 and describes “[c]ode to indicate time of day when advert may be shown.” See Sur-reply 5–6 (reproducing Ex. 1001, Table 1). Again, limitation 1.c.1 is broader than various descriptions of different types of header fields described in the specification, for example, it 6 These two Sur-reply arguments contradict each other by implying the metadata (claimed header first frame) must include both “the local broadcasting time regulation” and “the time of day at which said advertisement must be shown.” In any case, as determined herein, limitation 1.c.1 requires neither.” slip op. at 26
Patent outcomesUS 9,392,302 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,392,302 - PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. 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). We consider prior art references “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)). A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. 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). We consider prior art references “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 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - PTAB · Sep 25, 2024 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Al-Shyoukh and Ivanov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Trademark Office under 37 C.F.R. § 42.4(a), 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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’074 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Chen’s testimony, Petitioner argues that a person of ordinary skill in the art would have had “a Master’s Degree in Electrical Engineering, or alternatively a Bachelor’s Degree in Electrical Engineering and two years of experience working on analog circuit design.” Pet. 9 (citing Ex. 1002 ¶ 38). At this stage, Petitioner’s argument is uncontested, and it appears to be supported by the types of problems and solutions in the ’074 patent. See, e.g., Ex. 1001, 1:25–2:44. Thus, we adopt the formulation preliminarily for this decision.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“claim constructions that correspond to constructions it expects Patent Owner to assert. See Pet. 20 n.2. After Patent Owner filed its Preliminary Response, Petitioner notified us that the district court in the parallel district court litigation issued a claim construction order interpreting two terms relevant to this proceeding, as shown below: Claim Term District Court’s Construction” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“limitation was indefinite because it was subject to 35 U.S.C. § 112 para. 6 and the ’074 patent failed to disclose sufficient corresponding structure. See Ex. 3001, 9. However, in its Petition, Petitioner adopts what it understands to be Patent Owner’s claim-construction in the parallel proceeding: “that 1[d] is not a means-plus-function element under [§ 112 paragraph 6], and to the extent it is, the claimed function is to enable/disable the biasing circuit for reducing standby current, and the corresponding structure is the signal input line at node M in Figure 3.” Pet. 21–22. Assuming that limitation 1[d] does not invoke § 112 paragraph 6, Petitioner argues that “Al-Shyoukh discloses inputs from a biasing circuit into its LDO but does not specify a design,” but Ivanov discloses a specific design for implementing the recited enable/disable function, and a person of ordinary skill in the art would have had reason to incorporate Ivanov’s design into Al-Shyoukh’s LDO. Pet. 22–26 (citing Ex. 1004, 1732; Ex. 1005, 1:6–18, 3:43–49, 3:54–63, 4:26–33, 5:19–25, 6:7–22, 6:47–54, Figs. 1, 2; Ex. 1002 ¶¶ 60–70). Alternatively, if limitation 1[d] invokes § 112 paragraph 6 and Patent Owner is correct that the corresponding structure is the signal input line at node M in Figure 3 of the ’074 patent, Petitioner argues that this structure is identical to Ivanov’s input line 8. Pet. 26 (citing Ex. 1001, Figs. 1, 3; Ex. 1002 ¶ 69).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,471,074 - PTAB · Sep 12, 2024 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 4–6 and 8 on all asserted grounds, finding a reasonable likelihood that claims 4–6 and 8 are obvious over Lee1 and Lee2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’207 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We preliminarily adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When construing claim terms, we first review the language of the claims. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). The claim recites four terms: “preambleInitialReceivedTargetPower(0),” “preambleInitialReceivedTargetPower(1),” “powerRampingStep(0),” and “powerRampingStep(1).” Ex. 1001, 36:57–62. These terms represent outputs of, or values dependent on, inputs (0) or (1). Id. at 29:30–53; Ex. 2002 ¶¶ 21– 23. Given that claim 4 separately lists initial power values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1),” we are skeptical of Petitioner’s argument that these two values should be construed to mean a single value (i.e., preambleInitialReceivedTargetPower), because that would render the separate listing superfluous. Moreover, if the two values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1)” were construed to mean single value preambleInitialReceivedTargetPower, the additional “(0)” and “(1)” claim language would be superfluous. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”); Dig.-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (noting “the importance of construing claim terms in light of the surrounding claim language, such that words in a claim are not rendered superfluous”); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court’s claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the prior art need not explicitly disclose or explicitly suggest the proposed modification (here, at least according to Patent Owner, making initial power and power ramping dependent on procedure type), the absence of precise teachings regarding the proposed modification does not undermine the grounds of unpatentability. Lee2 discloses initial power and power ramping functions dependent on input. Ex. 1006 ¶¶ 63, 71–74. Specifically, Lee2 discloses using, based on measured signal power (RSRP), event/distance as input for initial power and power ramping. Id. Lee2 does not, nor could it, address using procedure type as input for initial power and power ramping because Lee2 only discloses 1 type of procedure––the conventional 4-step. Ex. 1006, Fig. 3. Per Lee1, reducing from the conventional 4-step to 2-step is a development in the technology to reduce time delay. Ex. 1005 ¶ 6. Although not discussed in Lee1, the prosecution history shows that switching from 4-step to 2-step is similarly based on measured RSRP. Prelim. Resp. 39 (discussing prosecution history); Ex. 4039–40. Patent Owner’s declarant also acknowledges that there is a correlation (albeit unreliable) between RSRP and distance. Ex. 2002 ¶ 27 (“RSRP may or may not correspond to distance in the real world due to various wireless artifacts . . . .”). Accordingly, we are preliminarily persuaded that a person of ordinary skill in the art, facing the needs created by the development of new types of procedures (i.e., the 2-step), and upon recognizing the link between event/distance, procedure type, and measured RSRP, would have, in light of Lee2, seen a benefit and had a reasonable expectation of success in using initial power and power ramping functions dependent on procedure type.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,932,207 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976 - PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
- BurdenNot shown unpatentable
“Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,118,602
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.