- PTAB · Sep 16, 2024 · IPR2024-00616 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). We may institute inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition and the evidence of record, we institute an inter partes review as to claims 1, 2, 4–17, 19, and 20 of the ’554 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific 3 In the present record, neither party presents arguments or evidence relating to secondary considerations. experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 7 (citing Ex. 1012 ¶ 36). At this time, Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 2. On this record and for the purposes of institution, we determine Petitioner’s proposed level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’554 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]one of the claim terms of the Challenged Claims require an explicit construction to resolve the current grounds.” Pet. 8. Patent Owner “agrees with Petitioner[] that, for purposes of this Preliminary Response only, all terms of the ’554 patent have their plain and ordinary meaning.” Prelim. Resp. 10. At this stage of the proceeding and based on the current record, we need not construe explicitly any claim terms because no such construction is necessary to determine whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). To the extent the parties’ arguments implicate claim construction, these are discussed below with reference to limitation 1[b].4” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Fifth, Patent Owner argues that “Douglas teaches away from Wager by teaching against accomplishing its goals in an in-person [clinical] setting like the one to which Wager is directed.” Id. at 27–28 (citing Ex. 1003 ¶¶ 4, 5, 11, 13). Patent Owner argues that Douglas’s system is designed for remote monitoring of patients to avoid the costs and inconvenience of in-person programs. Id. (citing Ex. 1002, 1:29–35, 2:5–7). On this record, we do not agree that Douglas teaches away from a combination with Wager’s interface simply because the interfaces may be used in different environments. Moreover, Douglas teaches alternatives to remote monitoring, including in-person visits. See Ex. 1002, 11:1–2 (“The system also accepts additional patient data obtained during office visits.”); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,144,554 - PTAB · Aug 26, 2024 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1 and 5–8, on all asserted grounds, after finding a reasonable likelihood of success on the Li, Wu, and Paunikar challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed in showing that at least one of the challenged claims is unpatentable on the following challenges to patentability, including: Claims 1 and 5–8 as unpatentable over Li, Paunikar, and Wu. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’845 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan) as having “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking, including experience with the IPv4 and IPv6 protocols, or a related field,” and noting that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003, Bhattacharjee Decl. ¶ 62). Patent Owner does not contest Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 19. The level of ordinary skill in the art may be evidenced by the references themselves. 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). As the level of skill agreed to by the parties appears commensurate with the subject matter of the ’845 patent and the references, we apply this description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003, Bhattacharjee Decl. ¶ 201. For example, the ’845 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21, Ex. 1003 ¶ 201; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 78–79 (citing Ex. 1003, Bhattacharjee Decl. ¶ 207). As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 79–80 (citing Ex. 1003, Bhattacharjee Decl. ¶ 211). Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 76–80; Ex. 1003 ¶¶ 199–212. On this record, Petitioner shows sufficiently that an ordinarily skilled artisan would have had reason to combine the cited teachings of Li and Wu.” slip op. at 51
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,451,845 - PTAB · Aug 13, 2024 · IPR2024-00561 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1 and 6 on both § 103 grounds, finding a reasonable likelihood that each challenged claim would be shown obvious over either asserted reference combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The art presented in the Petition is not “substantially the same” as the art previously presented to the Office when there is a material difference between them. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this time, we determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Furthermore, on the current record, we are also unpersuaded by Patent Owner’s contention that Petitioner’s reasons for combining Wainner and Bocci are “purely hindsight based.” Prelim. Resp. 27–28. In particular, we are unpersuaded by Patent Owner’s contention that “[n]one of the purported motivations to combine Wainner and Bocci even address the specific depicted in annotated Figure 2 of Wainner in the Petition, Petitioner relies on Wainner, and not Bocci, for teaching two separate multi-segment pseudo-wires sharing a link. See Pet. 28–31; Ex. 1030, Fig. 2. As Petitioner clarifies, “Wainner does disclose these elements,” wherein “Bocci would have supplemented Wainner’s disclosures.” Pet. 24. Petitioner contends that “Wainner itself explains that it teaches a ‘particular embodiment of a method for providing point-to-multipoint multihop distribution using Pseudo[-]wires (PWs)’ that avoids scalability problems.” Id. at 25 (citing Ex. 1030 ¶ 6). Further, Petitioner contends that Bocci also “explains that implementing multi-segment pseudo-wires provides scalability benefits.” Id. (citing Ex. 1031, 3–4). Based on this current record, we find availing Petitioner’s contention that “both Wainner and Bocci contain teachings, suggestions, and motivations to combine the references together.” Id. (citing Ex. 1040 ¶ 62). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Wainner in view of Bocci teaches “setting up a second pseudo-wire between said input router and a second output router [], wherein the second pseudo-wire comprises said first link and a third link set up between said intermediate router and said second output router,” wherein “said first link being shared by the first and second pseudo-wires,” as recited in claim 1. Furthermore, based on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Warner and Bocci.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,130,775 - PTAB · Aug 8, 2024 · IPR2024-00485 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that claims 1–10 would have been obvious over Li and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner notes that several claim terms previously were construed by a district court in another case. Pet. 10–14 (citing Ex. 1036). Patent Owner proposes construing the term “domain” to mean “a network or subnetwork and its address space that are under common control.” Prelim. Resp. 19–21. Petitioner disagrees with Patent Owner’s proposed construction of the term “domain.” Pet. 31. We determine that no claim terms require express construction for purposes of this Decision. As discussed below, even if we assume that the term “domain” means “a network or subnetwork and its address space that are under common control,” Petitioner shows sufficiently that at least one of the challenged claims is unpatentable. See Section II.E.1. As a result, we need not resolve the parties’ dispute about the meaning of the term “domain” for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“As discussed above, Petitioner presents evidence that although Li-2 “never became an official Internet-Draft published in the IETF directory,” Li-2 remained in the IETF’s staging folder. Pet. 20–22; Ex. 1009 ¶¶ 10–11. But the evidence of record indicates that the IETF’s staging folder may contain thousands of documents. Prelim. Resp. 35; Ex. 1008 ¶ 4; Ex. 1044. This raises the issue of whether a person of ordinary skill in the art exercising reasonable diligence could have located Li-2 simply by browsing the filenames of the numerous documents in the IETF’s staging folder. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response. Petitioner also presents evidence that the IETF’s Datatracker included Li-2 for “a given period” after the authors canceled Li-2. Pet 22; Ex. 1008 ¶ 11. But Petitioner does not indicate how long the IETF’s Datatracker would have included Li-2 (e.g., hours, days, weeks, years). See Pet. 22; Prelim. Resp. 36; Ex. 1008 ¶ 11. This raises the issue of whether Li-2 was present in the IETF’s Datatracker such that a person of ordinary skill in the art exercising reasonable diligence could have located Li-2. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response.” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213–214. For example, the ’844 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,451,844 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentablePTAB · Jul 31, 2024 · IPR2023-00360 · APJ James J Mayberry · IPR · Final written decision
Claims 1–6 are unpatentable: claims 1–5 as obvious over Backhaus and Logan, and claim 6 as obvious over Backhaus, Logan, and Saksena.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art at the time of the alleged invention of the ’770 patent . . . would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of communication . . . More education can supplement practical experience and vice versa. Pet. 4 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’770 patent.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 45–46. As will be evident from our analysis below, we conclude that it would have been obvious to employ an IP-based communication. There is no dispute that an IP-based communications channel satisfies the term channel as used in the claims. Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“not require the pre-call information to be transmitted after the call is received at the switch. The “general rule [is that], ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc., 764 F.3d at 1398. As discussed in greater detail below, we do not find the asserted claims, read in light of the Specification,6 to require that the pre-call information having a bridge number be transmitted after a call to a secondary number is made. We begin with the words of the claim. See, e.g., Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the . . . claim [at issue] can be highly instructive.”). The complete “transmitting” step recites: transmitting pre-call information to the handset over the at least one data channel the pre-call information including the bridge telephone number and the handset-associated telephone number, such that the handset is capable of displaying the handset-associated telephone number to a user and, based on user input, accepting the incoming call by connecting with the switch over the at least one voice channel using the bridge telephone number. Ex. 1001, 10:29–37. The plain language of the claims requires that the pre-call information is transmitted such that the handset is capable of displaying the handset-associated telephone number and accepting the incoming call. Nothing in this language precludes the pre-call information from being transmitted before the incoming call is received at the switch— the requirement is that the information makes the handset capable of displaying the handset-associated telephone number to a user and accepting” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“The Petition, at page 41, makes the argument. We also do not agree with Patent Owner and Dr. Akl that a person having ordinary skill in the art would not have been motivated to employ IP-based communications for the pre-call information. Dr. Akl testifies that [i]f the relationship number was split into a separate transmission[] and transmitted faster than the call itself, as the Petition appears to suggest, then the relationship number could arrive before the call. In this case, the handset would have a notification relating to a call that is not ready to accept, which would be a bad experience for the user because the user would be able to see the incoming call notification but would be unable to accept it. Ex. 2010 ¶ 81. But this testimony ignores the fact that the scenario discussed in Backhaus is the case where a third party caller calls for the first time, and a relationship number is created. See Ex. 1005 ¶ 53. If the pre-call information arrives before the call, then the SLS module on the phone can use the information to display the caller information once the call is connected. Such an approach may avoid the situation where “unknown caller” needs to be displayed, for example. See id. ¶ 55. Indeed, Backhaus suggests Petitioner’s proposed use. See id. ¶ 73 (“Such channels can be used in setting up the relationship databases, sharing information between the SLS module 105 and the SLS platform 115.”). Because Dr. Akl’s testimony is inconsistent with Backhaus’s express teachings, we give it little weight.” slip op. at 42
Patent outcomesUS 9,667,770 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,667,770 - Google LLC v. Flypsi, IncAll claims unpatentablePTAB · Jul 29, 2024 · IPR2023-00361 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are shown obvious on the decided grounds; the additional Taylor grounds are not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication. . . . More education can supplement practical experience and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. PO Resp. 6. Determining the level of ordinary skill in the art involves various 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). Based on the complete trial record, we adopt the assessment offered by Petitioner and undisputed by Patent Owner, as it is consistent with the ’105 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“the term, and invited further briefing. Dec. on Inst. 14–15. Patent Owner does not assert that this construction affects Petitioner’s “first way” obviousness assertions. PO Resp. 31. After consideration of the post- Institution briefing, we agree with Patent Owner that Petitioner’s “second way” obviousness assertions rely upon a lack of ordering in claims 1 and 2 such that the transmitting of pre-call information may occur prior to the receiving on an incoming call (Pet. Reply 3); therefore, the term “pre-call information” requires construction to resolve the controversy. The “general rule [is that], ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014). As discussed above, we do not find the asserted information having a bridge number be transmitted after a call to a secondary number is made. The plain language of the claim requires that the pre-call information include a bridge number “for connecting the handset to the incoming call at the switch”; i.e., information to be used with respect to the incoming call recited in limitation [1.d]. The transmission of the pre-call information may therefore be at any time such that its contents (the bridge number) may be used with respect to the recited incoming call. Consequently, we do not adopt Patent Owner’s proffered construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“whether teachings other than Winbladh would be preferentially considered, improperly frame the obviousness question. Patent Owner and Dr. Akl emphasize that Winbladh uses a “‘host resource’ that manages multiple call legs,” arguing that is different from Backhaus’s “more limited” system that uses a “conventional call routing system.” PO Resp. 36–37 (citing Ex. 2010 ¶ 113). However, the obviousness question is “whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations,” not whether such a combination would preserve all aspects of either Backhaus or Winbladh. See Axionics, Inc. v. Medtronic, Inc., 2023 WL 4410686 (Fed. Cir. July 10, 2023). Moreover, “it’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Further, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference [but rather] what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020) (“KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B”). Here, Petitioner’s combination provides for a pre-call transmission of local telephone number #βr, and would logically provide advantage in those situations in which a long distance number was originally used for the connection; i.e., those situations for which Winbladh is purposed. We further note that a combination need not work in all situations for a person having ordinary skill in the art to find it advantageous. See Intel tradeoffs should be weighed when a benefit occurs during only some operating conditions).” slip op. at 39
- Expert testimonyPetitioner expert creditedDecided for petitioner
“4 Patent Owner argues that we should still address its proposed construction of the term “channel” because it “significantly impacts the credibility” of Petitioner’s declarant, Dr. Bill Lin. Tr. 68:3–24; PO Sur-reply 3 n.1. We disagree. The portions of the Lin Declaration that we rely on in this Decision are credible because those portions are consistent with and supported by the other evidence of record. See Sections II.D–II.E.” slip op. at 9
Patent outcomesUS 10,051,105 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,051,105 - PTAB · Jul 26, 2024 · IPR2024-00341 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–17, 19, 21–27, 29, and 30 because Petitioner showed a reasonable likelihood that claim 1 would be obvious over TS-23.140 and Ogawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“b) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the present record, Petitioner shows a reasonable likelihood of prevailing in its challenge to claim 1 as unpatentable over TS-23.140 and Ogawa.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) 3–5 years of experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 1–15, 21, 22). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we do not need to interpret expressly any claim term. 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)). We apply Petitioner’s understanding of the claim terms as above described.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that TS-23.140 would have been implemented with a modem because “it was well-known to use a modem to enable communications over the networks described in TS-23.140,” “would have been a conventional and obvious way to implement what TS-23.140 describes,” and would have been “nothing more than utilizing familiar, known components to achieve a predictable result of facilitating TS- 23.140’s communications.” Pet. 9–10 (citing Ex. 1003 ¶¶ 61–63; Ex. 1004, 14, 17–19, 23–24; Ex. 1008 ¶¶ 27–28, 44, Figs. 1, 4); see also id. at 19 (summarizing the proposed combination). Petitioner also argues that there would have been a reasonable expectation of success in implementing a modem in TS-23.140. Id. at 10 (citing Ex. 1003 ¶ 63).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,733 - Google LLC v. Flypsi, Inc.All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00358 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 23–29. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 26–29. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 55–56; Ex. 1002 ¶ 101. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 54–56; Ex. 1002 ¶ 101; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 57; Ex. 1002 ¶ 102.” slip op. at 22
- Expert testimonyPetitioner expert creditedDecided for petitioner
“because it is “highly conclusory” and “internally contradictory,” and because Dr. Lin “could not explain his opinions at deposition.” PO Resp. 38–39; PO Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26
Patent outcomesUS 10,334,094 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,094 - Google LLC v. Flypsi, Inc.All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 25–26. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“had reason to combine the cited teachings of Backhaus and Taylor. Pet. 50– 54 (citing Ex. 1002 ¶¶ 94–100). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 53; Ex. 1002 ¶ 97. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 52–53; Ex. 1002 ¶ 97; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 53–54; Ex. 1002 ¶ 98.” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26
Patent outcomesUS 11,218,585 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,218,585 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00359 · APJ James J Mayberry · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 over Backhaus and Taylor, and claim 3 over Backhaus, Taylor, and Saksena.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . at the time of the alleged invention of the ’554 patent would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication . . . More education can supplement practical experience and vice versa. Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’554 patent.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenged claims to resolve the underlying controversy.” Pet. 8. Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. As will be evident from our analysis below, we rely only on the “second way” for purposes of this Decision. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–22; Pet. Reply 3 (“Flyp does not even allege that its construction is relevant to the ‘second way’ the Petition addresses limitation [1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Also, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“suggest that we categorially disregard Dr. Lin’s declaration. As a general point, our precedential decision in Xerox does not provide a blank condemnation of declaration testimony that is identical or virtually identical to language in a paper. Xerox found that the “cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox at 15; see also 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.”). Here, Dr. Lin cites to evidence to support certain testimony. See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011). Also, we do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s testimony. We assess the appropriate weight to give the testimony in our analyses below.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“provided a motivation to combine the teachings of a PSTN interface in Backhaus’s system, even though Backhaus discloses interfacing with the PSTN. Backhaus is silent as to how its system interfaces with the PSTN. As such, we agree with Petition that a person having ordinary skill in the art would have been motivated to connect SLS platform 115 with the PSTN and to also include a PSTN interface in order to facilitate such an connection when implementing Backhaus’s system and processes—such that SLS platform 115 could provide the disclosed second line services to many device users connected to the PSTN that is known to provide reliable communications. Pet. 50. Indeed, Patent Owner’s argument that Backhaus discloses interacting with the PSTN strengthens Petitioner’s position, demonstrating that a person having ordinary skill in the art, when considering Backhaus’s and Taylor’s teachings together, would have used a PSTN interface to ensure a connection with a PSTN. Cf. Pet. Reply 19 (“Rather, it shows that a [person having ordinary skill in the art] would have been motivated to ‘include a PSTN interface similar to that discussed in Taylor when implementing Backhaus’s telephony service system.’” (citing Pet., 49–51)).” slip op. at 32
Patent outcomesUS 11,012,554 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,012,554
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.