• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.No claims unpatentable
  PTAB · Sep 8, 2022 · IPR2021-00560 · APJ Russell E Cass · IPR · Final written decision

  Claims 11–17 were not shown unpatentable under either obviousness ground because the evidence did not establish the claimed initial transmission of control information on the specified channels.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “itself. Claim 11 states that, after the secondary station receives the acknowledgement, “control information is initially transmitted on an uplink control channel and a downlink control channel” between the primary station and secondary station. The use of the word “initially” here signifies something that occurs first, or at the beginning.3 Thus, saying that control information is “initially transmitted on an uplink control channel and a downlink control channel” signifies that control information is transmitted for the first time on those particular uplink and downlink control channels. Thus, the plain meaning of the claim language indicates that, after the secondary station receives the acknowledgement, control information is transmitted for the first time on the claimed “uplink control channel” and “downlink control channel” “between the primary station and said secondary station.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp and Chen teach limitation 11(c) and the comparable limitation in claim 15. Petitioner’s arguments concerning Lomp are discussed above with respect to Ground 1. As to Chen, Petitioner identifies Chen’s feedback channels of the forward and reverse link as the claimed uplink and downlink control channels, but does not establish when control information is “initially transmitted” on those channels. Pet. 62 (citing Ex. 1003 ¶ 133). On the other hand, Dr. Lanning testifies that “[t]he control information that is exchanged in steps 330 and 350 of Chen is not the initial transmission of control information,” because “[s]uch initial control information would have been exchanged in Chen before the operation of Chen at the idle rate in step 310” in order to adjust the transmission power to an appropriate level for the idle rate. Ex. 2004 ¶ 276. We find Dr. Lanning’s testimony to be credible because it is consistent with Chen’s statement that “each base station must rapidly and accurately adjust the transmission power for the signals which it transmits to the mobile station,” and Chen’s description of a closed loop power control system for adjusting the transmission power by comparing measured power level against a threshold value, such that “if the power level is lower than desired, the base station increases the transmission power of its transmitted signals, otherwise the transmission power is decreased.” Ex. 1006, 1:56–59, 1:66–2:11; Ex. 2004 ¶¶ 191–193.” slip op. at 33

  Patent outcomesUS 7,089,028 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,089,028
• Nokia Of America Corporation v. TQ Delta, LLCInstitution denied
  PTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,453,881
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Sep 1, 2022 · IPR2021-00695 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–5, 7–11, 13, and 14 as anticipated and obvious over Huebner, and claims 1–14 as anticipated and obvious over de Haan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science degree in Electrical Engineering or an equivalent field, with two years of academic or industry experience in computer systems or comparable industry experience.” Pet. 6 (citing Ex. 1003 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Stephen Gray. Ex. 1003 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “wherein the movement signalling provides an indication of one or more movement criterion of the projector” means “includes.” See, e.g., PO Resp. 5 (“the movement signaling providing (in other words, included in the movement signaling)”); PO Sur-reply 1 (“the ‘movement signaling provid[ing]’ (in other words, included in the movement signaling)”). As discussed below, even if we were to assume that the term “provides” means “includes,” the asserted prior art nonetheless teaches the disputed claim limitation. See Sections II.D.2, II.F.2. As a result, we need not resolve this particular claim construction issue in order to resolve the parties’ disputes about the asserted grounds of unpatentability. slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We disagree. The claims of the ’071 patent indicate that the movement signaling and movement criterion need not be separate signals. Claim 1, for example, recites “wherein the movement signalling provides an indication of one or more movement criterion of the projector.” Ex. 1001, 11:21–23 (emphasis added). Patent Owner acknowledges that the claim term “provides” indicates that the movement signaling includes the movement criterion, and, thus, the movement criterion is not a separate signal. Id.; PO Resp. 5; PO Sur-reply 1; see Retractable Techs., Inc. v. Becton, Dickson & Co., 653 F.3d 1296, 1303 (Fed. Cir. 2011) (holding that the claim language indicates that the “needle holder” and “retainer member” need not be separate components). The written description of the ’071 patent confirms that the movement signaling and movement criterion need not be separate signals. Specifically, the ’071 patent states that “[b]y providing these movement criterion in the movement signalling, the processor is capable of recognising one or more of different types of movement/combinations.” Ex. 1001, 2:18–21 (emphasis added). Thus, the ’071 patent describes the movement criterion as provided “in” the movement signaling, not as a separate signal. Id.; see Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011) (holding that the specification discloses that the “cutting box” may also function as a “dust collection structure,” and, thus, the claim terms do not require separate components). Because Patent Owner’s interpretation is not consistent with the scope of the claim language and the written description, we decline to adopt it. No further construction of the phrase “wherein the movement signalling provides an indication of one or more movement criterion of the projector” is necessary to resolve the parties’ disputes about the asserted grounds of unpatentability. See Sections II.D.2, II.F.2.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner’s argument is unavailing. As discussed above, we decline to adopt Patent Owner’s interpretation that requires the movement signaling and movement criterion to be separate signals. See Section II.C.1. Further, Huebner discloses both the movement signaling and movement criterion. Huebner discloses a position sensor “that provides movement signals to the control unit 24.” Ex. 1005 ¶ 64. Huebner also discloses that the movement signals “provide[] information to the control unit regarding movement of the entire image projecting device 10 along x, y and z axes.” Id. In other words, Huebner discloses movement signals that include information indicative of the movement of the projector. Id. Thus, as Petitioner explains, Huebner’s movement signals disclose the recited “movement signalling” and the information included in Huebner’s movement signals disclose the recited “movement criterion.”4 Pet. 13, 18– 19; Pet. Reply 4–5.” slip op. at 11

  Patent outcomesUS 8,147,071 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,147,071
• Nokia Of America Corporation v. TQ Delta, LLCInstituted
  PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution

  The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner

    “Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,462,835
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Sonrai Memory LimitedInstituted
  PTAB · Jul 26, 2022 · IPR2022-00305 · APJ Michael T Cygan · IPR · Institution

  The Board instituted review of claims 1, 3–6, 8, 10–14, 16, 19–21, 25–28, 39, 45, 47–50, 54–58, and 60 on all asserted §103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “instituted only if “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 given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–6, 8, 10–14, 16, 19–21, 25–28, 39, 45, 47–50, 54–58, and 60 of the ’766 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’766 patent and all of the asserted grounds of unpatentability.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 17–18 (PTAB Dec. 20, 2019) (precedential). Such evidence may include indicia on the face of the reference, such as printed dates and stamps, evidence of indexing on a national library system website, declaration from a content owner, and evidence that a copy has been accessed by the public at the relevant time. Id. at 17–19. “[A]t 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.” Id. at 13. We consider the evidence presented by Petitioner. Petitioner asserts that USB 2.0 is a printed publication because it is dated April 27, 2000. Pet. 19 (citing Ex. 1007, Cover). Petitioner’s declarant Mr. Ravencraft further supports this assertion, stating, “USB 2.0 was released to the public on April 27, 2000 and was available for public download on www.USB.org on the same day.” Ex. 1009 ¶¶ 3–5. Mr. Ravencraft attests that he is the President of the USB Implementers Forum (“USB-IF”), which operates the website, www.USB.org, and that he has personal knowledge, or knowledge based on review of the corporate records of USB–IF, of the USB 2.0 document and its publication through the course of his involvement with USB-IF since 2002. Id. ¶ 1. Patent Owner has not taken a position on this issue at this stage.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for petitioner

    “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) (2019). Under this standard, the words of a claim generally are 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner does not propose any claim constructions. Pet. 13. Patent Owner has not presented its view on this issue at this point of the proceeding. We determine that no claim term requires explicit construction, and give the terms of the claims their ordinary and customary meaning.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation marks omitted). Further, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner relies on the statement of Dr. Baker, who attests, a person of skill in the art as of January 20, 2004 (the earliest effective filing date of the ’766 Patent) would have had at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or an equivalent technical degree, and two or more years of experience with peripheral device interconnect technologies, such as USB. Additional education would compensate for less experience, and vice-versa. Pet. 13 (citing Ex. 1003 ¶ 37). Patent Owner has not presented its view on this issue at this point of the proceeding. For purposes of this Decision, we accept Petitioner’s characterization, as it is supported by Dr. Baker and consistent with the prior art.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,159,766
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Sonrai Memory LimitedInstituted
  PTAB · Jul 26, 2022 · IPR2022-00306 · APJ Robert J Weinschenk · IPR · Institution

  Instituted review of claims 1–3, 5–7, 9, 11–15, 17, 18, 20–23, and 25 on all asserted grounds after finding a reasonable likelihood of unpatentability.

  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 . . . 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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’733 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’733 patent on all the grounds of unpatentability 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 argues that a person of ordinary skill in the art would have had “at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or an equivalent technical degree, and two or more years of experience with peripheral device interconnect technologies, such as USB.” Pet. 13 (citing Ex. 1003 ¶ 37). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jacob Baker. Ex. 1003 ¶ 37. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “B. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “3. Reason to Combine Petitioner argues that a person of ordinary skill in the art would have had reason to combine the cited teachings of Cohen and USB 2.0. Pet. 20– 21 (citing Ex. 1003 ¶ 64; Ex. 1005 ¶¶ 1–6). In particular, Petitioner presents evidence that “Cohen is specifically directed to a USB system,” and a person of ordinary skill in the art “would have been motivated to look to USB 2.0 to better understand implementation details of the USB system described by Cohen, as it is an industry standard with which such a system would need to comply.” Id. at 20 (citing Ex. 1003 ¶ 64; Ex. 1005 ¶¶ 1–6). Petitioner also presents evidence that a person of ordinary skill in the art “would have had a reasonable expectation of success in combining these complementary disclosures.” Id. (citing Ex. 1003 ¶ 64). At this stage of the proceeding, Petitioner shows sufficiently that it would have been obvious to combine the cited teachings of Cohen and USB 2.0.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 7,325,733
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00357 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show Fox was a publicly accessible printed publication before the critical date.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and 7 We note that Petitioner does not attempt to establish that Fox was publicly accessible based on other theories such as, for example, actual dissemination. circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Schmidt, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field.” Pet. 8 (citing Ex. 1003 ¶¶ 32–34). Patent Owner does not offer a different definition, and Patent Owner” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,209,411
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00428 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not establish that Erdogan was publicly accessible before the critical date and thus prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in electrical engineering or computer science or related field plus at least two years of professional experience in the field of relational databases and/or user interfaces thereto.” Pet. 7 (citing Ex. 1003 ¶ 36). Patent Owner does not offer a different definition, and Patent Owner contends that Petitioner has not met the “reasonable likelihood” standard for institution even if we were to apply Petitioner’s definition. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’928 patent and the asserted prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,280,928
• Unified Patents LLC v. Monarch Networking Solutions LLCAll claims unpatentable
  PTAB · May 27, 2022 · IPR2020-01708 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Vandergeest and, separately, over Engberg and Stewart.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “In this case, Patent Owner does not contend that Cisco or any member of Petitioner was time barred as of the date the Petition was filed. As Petitioner pointed out, Cisco was not time barred when the Petition was filed. Tr. 5. Consequently, even if we were to determine that Cisco is an RPI of Petitioner, the § 315(b) time bar is not implicated because Cisco was not time barred at the time the Petition was filed. Because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need not address whether [Cisco] is an unnamed RPI.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 8

  • Skill levelSkill level board ownOther

    “In general, we agree with the areas of agreement in the parties’ proposals. In particular, we agree a POSITA would have had a bachelor’s degree in electrical engineering, computer science or the equivalent. Pet. 10; PO Resp. 8–9. Although we agree with Patent Owner that “[d]evice authentication (such as that taught by the ’507 Patent) is a tool used to provide authenticated and secure access to data networks,” Patent Owner has not explained sufficiently why “experience working in networking, specifically in the area of network security” is necessary. PO Resp. 8–9. So we adopt Petitioner’s proposed general experience of work involving “password authentication,” and “wireless communication,” wherein [h]igher levels of education may substitute for less experience, and more experience may substitute for the specified level of education” (Pet. 10), which comports with the level of ordinary skill in the art reflected in the prior art of record. Accordingly, we determine that a person of ordinary skill would have a bachelor’s degree in electrical engineering, computer science or the equivalent, and in addition, at least one year of work experience involving password authentication and wireless communication, wherein higher levels of education may substitute for less experience, and more experience may substitute for the specified level of education.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. 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 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner contends that Vandergeest, like the ’507 patent, “teaches authenticated access of a computer to a data network using a password sent to a cellphone over a cellular network.” Pet. 19. That is, Vandergeest “is analogous art to the ’507 Patent, as it is in the same field of endeavor, seeks to solve the same problem, and presents the same solution.” Id. (citing Ex. 1003 ¶ 102).” slip op. at 16

  Patent outcomesUS 7,756,507 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,756,507
• Ericsson Inc. v. Koninklijke KPN N.V.Instituted
  PTAB · May 25, 2022 · IPR2022-00079 · APJ Russell E Cass · IPR · Institution

  Instituted IPR on claims 1–5, 11, and 13–15 based on the Olofsson–Kuruvilla obviousness ground; the petition showed a reasonable likelihood of unpatentability, and Fintiv did not warrant denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Petitioner’s stipulation occupies an intermediate ground between the stipulations in Sotera and Sand Revolution. It is not as expansive as the stipulation in Sotera because it does not require Petitioner to relinquish all invalidity defenses that it could have raised in the IPR if the Petition is instituted. See Sotera at 13. However, it is stronger than the stipulation in Sand Revolution because it precludes Petitioner from relying in the district court on any of the same references used in the Petition, and is not limited to only the same grounds. See Sand Revolution at 11–12. For example, under a Sand Revolution-type stipulation, a Petitioner may be able to maintain some degree of overlap between the two proceedings by relying on the same primary reference in an obviousness combination in both proceedings and using on one or more different secondary references in each proceeding. According to the stipulation made by Petitioner in this case, however, Petitioner cannot rely on any of the references relied on in the Petition in the district court litigation. We agree with Petitioner and with our prior decision in VMWare v. Intellectual Ventures I that Petitioner’s stipulation here “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Prelim. Reply 4; VMWare at 20.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “to combine Olofsson and Kuruvilla. Prelim. Resp. 26–46. Based on the present record, we determine that Petitioner has presented sufficient evidence, including testimony from Dr. Kotzin, to show a reasonable likelihood that one of ordinary skill would have been motivated to combine Olofsson and Kuruvilla as Petitioner proposes.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Based on the present record, we agree with Patent Owner that the plain language of claim 1 expressly requires the “information collector” to perform the four actions identified by Petitioner. Ex. 1001, 11:53–66. We also preliminarily agree with Patent Owner that the claims recite an “information collector” that is distinct from the “terminals.” Id. at 11:49–50 (reciting “a plurality of terminals”), 11:51 (reciting “an information collector”), 11:53–54 (reciting that the “information collector” is configured to “select one or more terminals”).” slip op. at 16

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “means for” followed by a function, and Petitioner argues that Section 112, paragraph 6 applies to these limitations. Pet. 16–22. Petitioner also argues that claim 1 recites “that the ‘information collector’ and ‘coverage estimator’ are ‘configured to’ or ‘car[y] out operations’ to perform certain recited functionality, without reciting sufficient structure for performing those functions.” Id. at 17. Petitioner further asserts that the terms “information collector” and “coverage estimator” are nonce terms subject to Section 112, paragraph 6. Id. (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Accordingly, Petitioner argues, these limitations of claim 1 also invoke Section 112, paragraph 6. Id. Patent Owner does not address the issue of whether the “information collector” and “coverage estimator” claim elements invoke Section 112, paragraph 6. Prelim. Resp. 17–25. Based on the present record and for purposes of this Decision, we will apply Petitioner’s proposed constructions of the terms “information collector” and “coverage estimator” under Section 112, paragraph 6. Doing so is consistent with the claim construction order issued by the district court in the Texas litigation, which found that these claim elements invoke Section 112, paragraph 6. Ex. 1027, 33–35, 49. slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham

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.