- Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 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 petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - PTAB · Mar 13, 2024 · IPR2023-01293 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted review of claims 1–14 on both § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires “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). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) and deny the Petition in view of the related lawsuit in the Eastern District of Texas. Prelim. Resp. 26 (citing Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”)). However, Petitioner has since filed a Sotera stipulation, so named based on Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). See Ex. 1039. Thus, pursuant to the Interim Procedure, we will not discretionarily deny the Petition based on the related lawsuit. See Interim Procedure at 3 (“Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately three years industry experience in networking or communication systems, in particular addressing interoperability between different types of networks and satellite communications. Ex[1002], ¶52. Additional education in the fields of electrical engineering or computer science may serve as a substitute for experience in the field. Id. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Pet. 10. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Indeed, Patent Owner witness Michael Crane explicitly “accept[s]” it. Ex. 2001 ¶28. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’134 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner construes two terms that are not actually recited in the claim. First, Petitioner states that “[m]ulticast” means “the delivery of information to a group of destinations simultaneously using the most efficient strategy.” Pet. 11 (citing Ex. 1001: 1:14–16). None of the challenged claims recite “multicast,” but each of the independent claims recite “multicasting.” This decision does not turn on the meaning of “multicasting,” as Patent Owner does not contest that the cited art teaches such a feature. Accordingly, we need not and do not construe explicitly “multicasting.”” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,489,134 - PTAB · Mar 13, 2024 · IPR2023-01292 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–21 on all three obviousness grounds: Ohel; Nigawara; and Nigawara with Doolin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting is set forth in § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’802 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director has issued additional guidance on the application of Fintiv. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). According to the Director, “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020)). To that end, “the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Petitioner has filed a stipulation that it “will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” Ex. 1029. Petitioner represents that it “has provided a Sotera stipulation in this proceeding” and” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim language “storing at least one message having a lower priority between the first and the second message based on the determination,” does not appear limited to the instant in time at which data are committed to memory, nor does it appear to exclude continuing to store a message based on a determination that the message has a lower priority than another message. The claim language also does not appear to otherwise specify that the message is not to be stored until its priority is assigned. Patent Owner does not explain why the claim language should be read so narrowly. Prelim. Resp. 18–19; Prelim. Sur-reply 4–5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,324,802 - PTAB · Mar 13, 2024 · IPR2023-01347 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claim 16 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would show the claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claim 16 of the ’344 patent is unpatentable.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Based on the preliminary record, we are persuaded by Petitioner’s contention that claim 16 does not comply with the written description requirement for the reasons set forth in the Petition (Pet. 11–17), summarized above. More specifically, on the current record, we do not recognize the ’344 patent to disclose a representative number of API, solvent and co-former combinations having the necessary recited features. We do not understand the ’344 patent to disclose structural features common to the recited solvents and co-formers such that a POSA could “visualize or recognize” the members of the claimed genus. Ariad, 598 F.3d at 1350. We recognize that a POSA’s perspective is key to the written description inquiry and many factors may inform the adequacy of a specification’s disclosure, including existing knowledge in the field and the content of the prior art. See Ariad, 598 F.3d at 1351. On the current record, however, we do not find evidence that a POSA would have considered the recited mechanisms to form supramolecular synthons via non-covalent hydrogen bonding by pairing solvents and co-formers having certain functionalities a concept that was well-known in the art. effective filing date for claim 16 is February 13, 2014, the filing date of the ’344 patent.2” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that a POSA would have been motivated to combine Ueto with Li, Martindale, Zaworotko, and Remington “to improve physicochemical properties of the co-crystal components.” Id. at 49. In particular, furosemide was known as of 2014 to have low water solubility (Ex. 1506, Martindale at 1421; Ex. 1503, Appel ¶ 58; Ex. 1502, Rogers ¶¶ 232–34, 236), and water solubility, along with bioavailability, were properties that co-crystals had the potential to improve. Ex. 1507, Ueto at 485; Ex. 1503, Appel ¶ 59; Ex. 1502, Rogers ¶¶ 234, 236. As such, a POSA would have been motivated to pursue studies with the Ueto co-crystals, including the furosemide/nicotinamide/water co-crystal. Pet. 49. In view of the foregoing, we determine that Petitioner has established a reasonable likelihood of showing that the combination of Ueto, Li, Martindale, Zaworotko, and Remington renders obvious claim 16 for the purposes of our preliminary findings. Patent Owner at this stage does not offer any arguments addressing Petitioner’s substantive showing. Accordingly, we institute a inter partes review of claim 16 of the ’344 patent.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes constructions for the terms “active pharmaceutical ingredient (API)”, “API homosynthons”, “carbonyl”, “carboxamide”, “co-former”, and “supramolecular synthon.” Pet. 9–10. According to Petitioner, “[t]he parties agree that co-former is used synonymously with cocrystal former and that a co-former is a component of a co-crystal.” Id. at 9. Petitioner represents that the proposed constructions have been agreed to between the parties in parallel litigation, or agreed upon such that “the disputed portions are not relevant to [the] issues raised in this Petition.” Id. at 8. We have reviewed each of these constructions and adopt Petitioner’s proposed construction for the purposes of this Decision. Petitioner’s construction aligns with the plain words of the claim, is consistent with the prosecution history of the ’344 patent, and finds support in the uncontroverted testimony of Dr. Rogers. Ex. 1502 ¶¶ 52–63; Ex. 1516, 256–58, 261–63. Petitioner construes the term “co-crystal” to mean “a multiple- component, single crystalline phase, having a fixed stoichiometry of its component compounds.” Id. at 10. Petitioner states that the proposed construction of the term “co-crystal” is “currently disputed in parallel litigation between the parties; however, because claim 16 is unpatentable under Patent Owners’ constructions, Petitioner adopts those constructions solely for the purpose of this Petition.” Id. at 8–9. We adopt Petitioner’s proposed construction of “co-crystal” for the purposes of this Decision. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 13
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - PTAB · Mar 13, 2024 · IPR2023-01346 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 10, 11, and 18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“priority to the filing date of a prior application only “for an invention disclosed [in the prior application] in the manner provided by” 35 U.S.C. § 112. This requires that the earlier application provides written description support for the invention claimed by the later application. See Paice LLC v. Ford Motor Co., 881 F.3d 894, 906 (Fed. Cir. 2018); PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–11 (Fed. Cir. 2008); Augustine Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302–03 (Fed. Cir. 1999). The test for sufficiency of a written description under 35 U.S.C. § 112, ¶ 1, is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. As articulated in Ariad, “an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350 (citations omitted). One test of whether a claimed genus finds adequate support involves identifying in the specification “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350 (citing Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 of the challenged claims of the ’344 patent is unpatentable.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). 2 We note that Petitioner additionally challenges the Priority Applications for lack of enablement. Having found that the ’344 patent lacks written description support for all Challenged Claims, however, we need not address Petitioner’s enablement challenge in order to decide whether to institute. one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s presently unopposed definition is consistent with the ’344 patent and the prior art of record, we adopt that definition in deciding whether to institute trial. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01293 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 as anticipated by and obvious over Wu; claims 6, 7, 12, and 17 as obvious over Wu and Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering (or equivalent field) with 2–3 years of work experience in wireless communications.” Pet. 21 (citing Ex. 1003 ¶¶ 20–22). Patent Owner argues that one of ordinary skill in the art “would have an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00818 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institution of inter partes review of claims 1–19 (“the challenged claims”) of U.S. Patent No. 10,334,499 B2 (Ex. 1001, “the ’499 patent”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Ericsson filed a Preliminary Reply (Paper 9). We determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and therefore we instituted this proceeding on March 9, 2023, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”). We granted a request in IPR2023-00831 by AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC to be joined as a Petitioner in this proceeding. Paper 19. After a joint request of Patent Owner and Ericsson, we terminated the proceeding as to Ericsson, leaving AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (“Petitioner”) as the lead (and sole) petitioner in this proceeding. Papers 16, 17, 20.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1004. Thus issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1005.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units. As Petitioner argues, there does not appear to be any indication in the specification and other intrinsic evidence that “digital representation” should be given more than its ordinary meaning, or that an underlying construction of “radio resources” would not be applied to this claim term, which explicitly includes “radio resources.” Pet. Reply 9–10 (citing Ex. 1001, representation” in the specification of the ’499 patent). Our construction is further supported by the language of the claims, which requires that each “set of radio resources” is “for transmission at an antenna of the first remote unit.” Ex. 1001, 14:17–19, 14:22–24, 15:3–5, 15:8–10, 16:6–8, 16:11–13. With respect to the “digital representation” of “set[s] of radio resources,” the specification of the ’499 patent describes that in the downlink (base station to DRU antenna) path for data, RF signals received at the DAU from base station(s), are down-converted, digitized, and further processed resulting in “independently serialized, parallel data streams” that are delivered to DRUs. Ex. 1001, 4:63–5:12. Petitioner contends that this description of delivery of a digitized version of an RF signal to DRUs describes the sending/transmission of a digital representation of the radio. Pet. 9–10. While Patent Owner appears to argue that a “digital representation” of a radio resource would be only an “identifier” of, e.g., an RF carrier (PO Resp. 18), this does not appear to be supported by the specification or the cited testimony of Dr. Chrissan. We do not see a reason to relate “digital representation of . . . a set of radio resources” in the claims to the description in the ’499 patent specification of the remote configuration of DRU parameter settings via the DAU, including detecting or determining radio resources assigned to a DRU and configuring the DRU, turning on and off individual carriers transmitted and received by a DRU. PO Resp. 16–18 (citing Ex. 1001, 4:50–62, 6:31–44, 7:44–50, 12:15–39, 12:58–13:2). No cited portion of the specification describes these signals sent from a DAU to control a DRU as digital representations of a set of radio resources. While Patent Owner cites, in support, Dr. Chrissan’s declaration, Dr. Chrissan does” slip op. at 16
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01419 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 8–9. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 19
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499
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.