- PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- BurdenDecided for petitioner
“The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,452,854 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, 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. Petitioner’s stipulation (Ex. 1025) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · May 23, 2024 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood of success on Foster grounds for claims 1–3, 7, and 8 and claims 4–6, 9, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’609 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’609 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, 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 level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’609 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Bhattacharjee (Ex. 1003 ¶¶ 37–38).” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“repeated, would not necessarily indicate that the chunks, each encrypted with a separate share key, would be again encrypted using the session master key (the cryptographic operation Petitioner contends would be reordered/repeated).” Prelim. Resp. 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been “pointless:” Indeed, [the skilled artisan] would recognize that encryption with the alleged first key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged first key (i.e., the session master key) would render the splitting and encryption of the alleged first key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 101–105. Thus, we find Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) more persuasive than Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 101–105) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Versions.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“Here, however, Petitioner does not insist any construction is incorrect. Rather, Petitioner presents alternative rationales for why the claims are unpatentable, stating that the Petition demonstrates “unpatentability regardless of which proposed construction is correct.” Pet. 9. Even though some stated rationales are based on Patent Owner’s constructions in the District Court Case, the Petition complies with the rule because it explains how the Challenged Claims are to be construed under the alternative challenges. See 37 C.F.R. § 42.104(b)(3). The rule “does not require Petitioner to express its subjective agreement regarding correctness of its proffered claim constructions or to take ownership of those constructions.” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609 - Samsung Electronics Co., Ltd. v. G+ Communications, LLCAll claims unpatentablePTAB · Apr 29, 2024 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–5, 7–9, 14, and 20 are unpatentable: Kwak anticipates them, and Kwak renders claims 8 and 9 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art proposed by Dr. Akl is slightly different from Petitioner’s proposal but Dr. Akl does not explain whether 4 Petitioner presents this challenge as two separate grounds. For “Ground 3,” Petitioner relies on Kwak’s PCT filing date (Pet. 3, 74–75), and for “Ground 4,” Petitioner relies on Kwak’s Provisional Application (id. at 3, 75–76). For “Ground 4,” Patent Owner does not claim the benefit of the filing date of the ’116 application. See PO Resp. 51. Accordingly, we do not analyze “Ground 4.” See Section III.H below. opinions would be different under Petitioner’s proposed level of skill. Furthermore, the level of skill is not dispositive of any issue here. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“corresponding to two or more selected investments” which was arguably anticipated by a reference that disclosed performing two separate requests to analyze two or more investments. Varma, 816 F.3d at 1362 (emphasis added). The Federal Circuit held that the claimed single statistical analysis of two or more investments was read out of the claim. Id. The Federal Circuit specifically held that “‘[c]omprising’ means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements.” Id. (emphasis added). Stated differently, “comprising” allows for broadening the claim with additional claim elements but not the broadening of existing claim elements. “plurality of heuristic modules.” Apple, 695 F.3d at 1373. The Apple court held that the “comprising” claim at issue was “not amenable to the addition of other modules that do not use different heuristic algorithms because such addition would impermissibly wipe out the express limitation that requires every module to have a unique heuristic algorithm.” Id. at 1379 (emphasis added). Relying on the Varma and Apple cases, we determine that the M transmission term is a claim element that cannot be broadened under the presumption arising from the use of “comprising.” Each case makes clear that the language of a particular element is not subject to being rewritten. This is not a situation where the claim is being broadened, as per the presumption, by the addition of elements. Rather, all embodiments in the specification show one predefined sequence per symbol. See, e.g., Ex. 1001, Figs. 2, 6, 7. Petitioner does not point to anything to the contrary. Indeed, Petitioner cannot cite to where the ’130 patent specification shows “more than one” predefined sequence per symbol. Tr. 26:8–19.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“In the Institution Decision, Patent Owner was given notice that it should address whether the relied-upon disclosure of Kwak based on the patent. Inst. Dec. 17. Patent Owner’s Response does not argue Kwak is not prior art based on its PCT filing date. See PO Resp. We make final our determination that Kwak is prior art to the ’130 patent based on Kwak’s PCT filing date. See Inst. Dec. 17 (“We preliminarily determine Kwak is prior art to the ’130 patent claims based on Kwak’s December 9, 2016 PCT filing date . . . .”).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“C. Legal Standard for Anticipation In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”). As the Federal Circuit has held: This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). A claim limitation is inherent if it is necessarily present in the prior art, not merely probably or possibly present. Akamai Techs., Inc. v. Cable & Wireless, 344 F.3d 1186, 1192 (Fed. Cir. 2003).” slip op. at 20
Patent outcomesUS 10,736,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - Netflix Inc. v. Divx, LLCAll claims unpatentablePTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand
On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.
RulingsRemand decision- RemandDecided for petitioner
“the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29
Patent outcomesUS 8,472,792 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - PTAB · Apr 2, 2024 · IPR2023-01469 · APJ Jason M Repko · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all petitioned grounds, finding a reasonable likelihood that Petitioner would prevail, including over Ho.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience.” Pet. 6 (citing Ex. 10021 ¶¶ 53–56). According to the Petition, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner offers two alternative constructions for “default frequency band”: (1) “a preferred frequency band” and (2) “a preset frequency band used automatically in the absence of a choice made by the user.” Pet. 6 (citing Ex. 1017, Attachment A, 4). Patent Owner asserts that the Administrative Law Judge in the parallel ITC action construed “default frequency band” to mean “a first selected frequency band.” Prelim. Resp. 9 (citing Ex. 1003, 32). In this decision, we do not see a need to construe this term to resolve any issues because Petitioner has shown a reasonable likelihood of prevailing on its challenge under any of the offered constructions. See infra § II.D.2.b.i.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“b. The Second Part The second part of the framework asks whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8–9 n.9. Patent Owner argues that Ho was expressly used by the Examiner to reject the claims, which shows that the Examiner considered and evaluated Ho. Prelim. Resp. 22. Patent Owner argues that Petitioner did not identify any errors in the Examiner’s evaluation of Ho, Gatewood, or Farid, and Petitioner’s arguments about reconsideration of the prior art are unsupported and conclusory. Id. at 22–23. We disagree. Petitioner shows that the Examiner overlooked specific teachings of the relevant prior art: Ho’s RSSI threshold. See Pet. 55 (quoting Ex. 1009, 14:38–41). Although Ho was the basis for a rejection, the Examiner cited Ho” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“iii. Analysis We disagree, at this stage, that Petitioner needs to show that every possible combination of personalities of Ho’s hybrid device meets the claim limitation. Rather, “a prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018). Here, the Petition sufficiently sets forth a particular mode of operation that is the basis for its challenge: hybrid device 120 is a 1002 ¶ 143). For the reasons discussed below, Petitioner has shown at this stage that this configuration meets the claim limitations. See infra § II.D.2.b. Thus, we disagree with Patent Owner’s arguments on this record. See Prelim. Resp. 39–40.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,681,698 - Tp-Link Corporation Limited v. Netgear, Inc.Institution deniedPTAB · Mar 25, 2024 · IPR2023-01429 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner does not show a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner largely agrees with Petitioner’s assertion, arguing that a person of ordinary skill in the art “would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data communication, or wireless networking systems.” Prelim. Resp. 10 (citing Ex. 20012 ¶ 25). The differences between these definitions do not affect our analysis here. For this decision, we adopt Petitioner’s definition.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit Dr. Haas on this issue (Ex. 2001 ¶¶ 46–48) over Dr. Ding (Ex. 1002 ¶¶ 74–78) because Dr. Haas’s testimony is supported by Sinha. We do not credit Dr. Ding’s testimony (Ex. 1002 ¶¶ 74–78) because it lacks sufficient supporting evidence and technical reasoning. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“i. Motivation Petitioner’s reason that one would have been motivated to make the modification is nothing more than a restatement of the proposed change. Id. That is, Petitioner argues that one benefit of integrating the controller into the AP is “higher integration.” Id. at 18. Here, Petitioner is describing a result (higher integration) that merely restates the proposed modification (integrating the controller). Id. Similarly, “reduced communication complexity” is nothing more than a restatement of the other aspect of the controller and AP. Id. Petitioner’s reliance on Liu is of little help to its obviousness rationale because the cited parts of Liu at most discuss a gateway and a centralized controller. See Pet. 18; Ex. 1009 ¶¶ 59, 62, Fig. 1. For example, Liu explains that the gateway collects information from the MAPs then determines the optimal STA-MAP association backhaul. Ex. 1009 ¶ 59 (discussing Fig. 6). According to Figure 9, Liu’s gateway communicates with the MAPs. Id. ¶ 62. Petitioner does not explain how Liu teaches any benefits to the proposed integration. See Pet. 18–19. Nor does Liu explain how to make such a modification. Ex. 1009 ¶¶ 59, 62, Fig. 1. Generally, the Petition contains no explanation why one of ordinary skill in the art would have modified Sinha to integrate a controller in a MAP from Liu’s discussion of a separate gateway that controls the MAPs. Pet. 18–19 (citing Ex. 1009 ¶¶ 59, 62, Fig. 1). That is, even if Liu teaches integrating a controller in a MAP, Petitioner does not provide a sufficient reason to look to Liu in the first place. Id.” slip op. at 13
§ 103 obviousnessPatents in suitUS 10,278,179 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Final written decision
Claims 8–22 are unpatentable as anticipated by Lauper or obvious over Lauper, ISO 7816-4, and ISO 14443; claim 23 is obvious over Lauper and Fu, with or without the ISO standards.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: 7 Neither party presents any objective indicia of non-obviousness. As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15–16 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Construction We construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner offers claims construction for the following terms: “transaction controller” (claims 8–23); “smartcard chip” (claims 8, 9); “said processor” (claims 10, 14, 25); “mobile user interface device” (claims 8–11, 13, 15, 16, 18, 21). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. 8 Person of ordinary skill in the art. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. After reviewing the record, we adopt Petitioner’s proposed constructions. See Ex. 1001, 31:39–54; Ex. 1002 ¶¶ 79–100; Pet. 12–15. For convenience, we reproduce them in table format below:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–7 and 24–31 are unpatentable as anticipated by Lauper and, alternatively, as obvious over Lauper, ISO 7816-4, and ISO 14443.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Cir. 2005) (en banc). Petitioner offers claim constructions for the following terms: “smartlink module” (claims 1 and 24); “the module” (claims 2–7 and 25–31); “smartcard chip” (claims 1, 5, 24, and 26–31); and “said smartcard processor chip” (claims 2, 5, and 7). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. Upon review of the record, we adopt Petitioner’s proposed constructions as a part of this Final Written Decision. See Ex. 1002 ¶¶ 67– 78–88; Pet. 12–15. For convenience, we reproduce them in table format below: Claim Terms Petitioner’s Proposed Constructions “smartlink module” and “the “a device that includes (1) a module” processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70). “smartcard chip” and “said “a device including a processor and smartcard processor chip”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“integrated circuit (communication controller 21’ . . . includes a processor and memory and processor executable code for providing data processing capability” and that a skilled artisan would understand that integrated circuit “includes all of the components called out in the claims the ’792 Patent which would be included in a ‘smartcard chip.’” Pet. 30 (citing Ex. 1005, Fig. 1, ¶¶ 18, 22, 23, 25; Ex. 1002 ¶¶ 169–172, 179–190). On the record, we are satisfied that Lauper’s integrated circuit constitutes the claimed smartcard chip. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“does not constitute a smartcard chip, “it would have been obvious to a POSITA (as Ground 2) to modify Lauper to replace the ‘integrated circuit (communication controller 21)’ with a smartcard chip that conforms to the ISO standards.” Pet. 32 (citing Ex. 1002 ¶¶ 178–190) (emphasis omitted).8 In so contending, Petitioner points to disclosure in Lauper that it is “an aim of the present invention to propose a mobile telephone that is suited for the transmission of data with external devices according to a plurality of different standards.” Id. (quoting Ex. 1005 ¶ 5) (emphasis omitted). Petitioner also relies on the testimony of Mr. Zatkovich discussing the use of smartcard chips as a part of the ISO standards, such as ISO 7816-4 and ISO 14443, for the type of operations and functions disclosed in Lauper. Id. at 8 Petitioner makes the same alternative argument in connection with the “smartcard chip” recitation in independent claim 24. See Pet. 60–61. 32–34 (citing, e.g., Ex. 1002 ¶¶ 39–41, 42–45 124–125, 152, 174, 175, 177, 191, 192, 193; Ex. 1005 ¶¶ 23, 25, 32). Petitioner further explains that a skilled artisan would have had adequate reason to combine the teachings of Lauper, ISO 7816-4, and ISO 14443, with a reasonable likelihood of success in so combining those teachings. See id. We also are satisfied that Petitioner also accounts for the smartcard chip requirement of the claims as a part of the ground based on Lauper, ISO 7816-4, and ISO 14443.” slip op. at 15
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792
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.