- Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00558 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution, finding no reasonable likelihood of showing claims 1, 3, 5, and 11–17 unpatentable because the contingent claim construction was unmet and the art showing was inadequate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- BurdenDenied
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent. D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 69, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8” slip op. at 11
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petitioner argues that, in the district court litigation, Patent Owner contends that, in the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 (see Ex. 1001, 9:15 (emphasis added)), the term “having” means “interconnected to.” Pet. 29. The District Court considered the arguments of the parties regarding this limitation in claim 1 (Ex. 1080, 13– 16),1 but decided not to construe this limitation (id. at 16 (“[I]t is unclear to me if ‘having’ requires further construction. Thus, I will not construe the term.”)).2 The contingency upon which the claim construction in the 1 There are two sets of page numbers on these pages of Exhibit 1080. We refer to the page numbers added to Exhibit 1080 for purposes of this proceeding and set forth in the lower, right corner of the pages. Pages 13–16 of Exhibit 1080 correspond to pages 10–13 of the original document. 2 In an email to the Board, Petitioner contends that it could not have anticipated this outcome. Ex. 3001 (“Petitioner could not reasonably anticipate when it filed the Petition that the district court would make such a statement after finding the claim not indefinite.”). Patent Owner argues to the contrary. Ex. 3002 (“Patent Owner disagrees that Petitioner could not reasonably have anticipated that the district court would not construe the term ‘having’ since neither party proposed a construction for that term—a Petition is based has not been met and, according to its own terms, the Petition should be denied.3 B.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00494 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition’s contingent claim construction was unmet and unsupported, and the cited art was not shown to teach all limitations of claims 1, 2, 4, and 6–10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 68, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8 7 It is clear that Patent Owner is referring to the agreed-upon construction of “embedded Universal Serial Bus (USB) Host” in the preamble of claim 1. See Ex. 1080, 3; see also Pet. 30. There is no agreed-upon construction of the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. As noted, Petitioner argues this phrase renders claim 1 indefinite. See Pet. 26 (“Petitioner argues in district court that claim 1 is indefinite.”), 28– 30. 8 In a proceeding involving a related patent, IPR2024-00496, Petitioner contends that the parties had an agreed-upon construction relating to the phrase “a USB Hub having a plurality of USB ports.” IPR2024-00496 Paper 11, 11–13. This is inaccurate. Petitioner does not direct our attention to any such agreement and we find none in the record of that or this proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maps the cited art to claim 1 as incorporating the interpretation of claim 1 proposed by Patent Owner in the district court litigation. See Pet. 56–59. Specifically, in the Petition, the phrase “a USB Hub having a plurality of USB ports” is rewritten by Petitioner to read “a USB Hub [interconnected to] a plurality of USB ports” or as rewritten with “possessing” in place of “interconnected to.” Id.9 The Petition alleges unpatentability under this construction. Id.; see also id. at 27 (“Petitioner demonstrates unpatentability of the Challenged Claims under this construction.” (footnote omitted)). As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’037 patent as “interconnected to” or “possessing” and 9 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 30 n.11. determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - PTAB · Oct 3, 2024 · IPR2024-00736 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1, 4–7, 9, and 11 on all four asserted §103 grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, the Preliminary Reply, and the Corrected Preliminary Sur-Reply, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims of the ’725 patent. We thus institute an inter partes review of all the challenged claims of the ’725 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a). A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“The ’725 patent identifies the field of the invention as follows: The present invention relates to the marketing and distribution of multimedia material, including digitally generated film, video, graphics and audio, and analogue[] traditional media converted into digital movie and television programs, and associated marketing materials for distribution over a computer network to exhibitors and broadcasters. Ex. 1001 at 1:20–25 (’725 patent). Thus, according to the ’725 patent, the relevant field of art is marketing and distribution of multimedia material over a computer network. Several references, e.g., Allen and Budow, have highly technical disclosures. Further, a patent is presumed to be enabling. By that standard, it would mean one of ordinary skill in the art would have sufficient skills to make and use the claimed invention without undue experimentation. We disagree with Patent Owner that one of ordinary skill in the art need not have a technical degree. Accordingly, for purposes of this Decision, we adopt the following definition of the level of skill for one of ordinary skill in the art: a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent. We view this definition as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below. C. Claim Construction” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Prelim. Resp. 22–23. We are not persuaded that any of these excerpts from the Specification dictate that the term “distributing” must be construed narrowly, as Patent Owner proposes. Patent Owner has not supplied an affidavit or declaration in support of its proposed claim constructions, and the only extrinsic evidence cited in support is a “Glossary of Film Terms” that was not provided with the Preliminary Response. See id. 17. While excerpts from the glossary were filed with the original Preliminary Sur-Reply as Exhibit 2004, the document is provided without any context and is incomplete. For example, the glossary’s definition of “distribution” (a term not found in the challenged claims) refers to the entry for “exhibition,” but the page containing that entry is not included in the exhibit. See Ex. 2004, 6. Moreover, the glossary appears to be derived from a 2013 publication. See id. at 21. The ’725 invention is substantially older; the patent relates back to a provisional application filed in May 2000. Ex. 1001, code (60). Accordingly, we do not find Exhibit 2004, standing alone, to be persuasive evidence of the understanding that one of ordinary skill at the time the invention was made would have had of the term “distributing.” Petitioner argues that “distribution” (or “distributing,” as the term appears in the claims) “should be construed according to its plain and ordinary meaning in a manner at least broad enough to encompass the disclosed embodiments.” Prelim. Reply 1–2. In particular, Petitioner argues that “marketing” and “distributing” are “separate concepts that relate to different claim elements.” Id. at 1. Given the lack of evidence to suggest that the patentee intended to adopt any special definition of the term “distributing,” for the purposes of our Decision on Institution, we determine that the term “distributing” is not limited to the process of marketing a film and supplying copies to exhibition venues. It also encompasses the technical steps required to supply copies to exhibition venues, such as “providing a server system accessible over a communication network . . . for transfer of . . . digital format over said communication network[.]”2 See Prelim. Reply 1 (quoting Ex. 1001 at 16:29–34 (’725 patent)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“that the Preliminary Response proposes an implicit construction that improperly excludes determining “correlation” using human input. Prelim. Reply 3–4 (citing Prelim. Resp. 25–26). According to Petitioner, “‘correlated information’ should be construed at least broad[ly] enough to encompass the disclosures of the intrinsic record, including that it may be done with or without human input.” Id. at 5. Patent Owner denies that it has proposed a construction for the term and states that it has merely argued that the asserted prior art does not disclose correlation. Corr. Prelim. Sur-Reply 2–3. We determine, based on the evidence provided (discussed infra Section II.D.2.b), that we do not need to resolve this potential claim construction dispute between the parties. See, e.g., 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.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,574,725 - PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). 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).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - PTAB · Sep 12, 2024 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 4–6 and 8 on all asserted grounds, finding a reasonable likelihood that claims 4–6 and 8 are obvious over Lee1 and Lee2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’207 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We preliminarily adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When construing claim terms, we first review the language of the claims. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). The claim recites four terms: “preambleInitialReceivedTargetPower(0),” “preambleInitialReceivedTargetPower(1),” “powerRampingStep(0),” and “powerRampingStep(1).” Ex. 1001, 36:57–62. These terms represent outputs of, or values dependent on, inputs (0) or (1). Id. at 29:30–53; Ex. 2002 ¶¶ 21– 23. Given that claim 4 separately lists initial power values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1),” we are skeptical of Petitioner’s argument that these two values should be construed to mean a single value (i.e., preambleInitialReceivedTargetPower), because that would render the separate listing superfluous. Moreover, if the two values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1)” were construed to mean single value preambleInitialReceivedTargetPower, the additional “(0)” and “(1)” claim language would be superfluous. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”); Dig.-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (noting “the importance of construing claim terms in light of the surrounding claim language, such that words in a claim are not rendered superfluous”); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court’s claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the prior art need not explicitly disclose or explicitly suggest the proposed modification (here, at least according to Patent Owner, making initial power and power ramping dependent on procedure type), the absence of precise teachings regarding the proposed modification does not undermine the grounds of unpatentability. Lee2 discloses initial power and power ramping functions dependent on input. Ex. 1006 ¶¶ 63, 71–74. Specifically, Lee2 discloses using, based on measured signal power (RSRP), event/distance as input for initial power and power ramping. Id. Lee2 does not, nor could it, address using procedure type as input for initial power and power ramping because Lee2 only discloses 1 type of procedure––the conventional 4-step. Ex. 1006, Fig. 3. Per Lee1, reducing from the conventional 4-step to 2-step is a development in the technology to reduce time delay. Ex. 1005 ¶ 6. Although not discussed in Lee1, the prosecution history shows that switching from 4-step to 2-step is similarly based on measured RSRP. Prelim. Resp. 39 (discussing prosecution history); Ex. 4039–40. Patent Owner’s declarant also acknowledges that there is a correlation (albeit unreliable) between RSRP and distance. Ex. 2002 ¶ 27 (“RSRP may or may not correspond to distance in the real world due to various wireless artifacts . . . .”). Accordingly, we are preliminarily persuaded that a person of ordinary skill in the art, facing the needs created by the development of new types of procedures (i.e., the 2-step), and upon recognizing the link between event/distance, procedure type, and measured RSRP, would have, in light of Lee2, seen a benefit and had a reasonable expectation of success in using initial power and power ramping functions dependent on procedure type.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,932,207 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Aug 29, 2024 · IPR2024-00496 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition relied on an unmet and inadequately supported claim construction and did not show that Chang and Chang II teach or suggest all limitations of claims 1–6.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 12
- BurdenNot shown unpatentable
“Petitioner does not contend that the plain and ordinary meaning of “having” as recited in claim 1 is either “interconnected to” or “possessing.” See generally Pet. As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’899 patent as “interconnected to” or “possessing” and determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“3 Moreover, our review of the docket from the district court litigation indicates that there has been considerable additional briefing and oral argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. “the claim is definite and, despite Petitioner’s assertion, Patent Owner has never sought to revise the claim. (Pet., 25.) Rather, Patent Owner has always maintained that a POSITA [(person of ordinary skill in the art)] would understand the term with reasonable certainty in view of the claims, specification, and prosecution history.” Prelim. Resp. 21 (footnote omitted); see also id. at 19 (“Specifically, a POSITA would understand that the plurality of USB ports the hub ‘has’ must include downstream ports.”). We do not adopt the claim construction upon which the Petition relies because it is not adequately supported. We apply the plain and ordinary meaning to the phrase “a USB port having a plurality of USB ports” as recited in claim 1.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,545,899 - PTAB · Aug 27, 2024 · IPR2024-00495 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR on claims 13, 14, and 18–20 for the asserted §103 ground based on Chang and Chang II; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the need for this second . . . Petition, the Board should decline to expend its finite resources considering it.” Prelim. Resp. 1. Patent Owner argues that “[n]either the substance nor the timing of [Patent Owner]’s claim interpretations justifies this second Petition.” Id. at 6. We disagree and determine that two petitions challenging claims of the ’420 patent are justified under the circumstances presented here. With regard to substance of the claim interpretations and merits of the challenge, the claim interpretations offered in the instant proceeding have no relation to the claims or the merits of the challenges that are the subject of the first Petition. As stated by Petitioner, “[t]he petition in IPR2024-00228 challenges claims 1-12 and 15-17” and “[t]here are no overlapping claims in these petitions.” PET’s Expl. 1. Petitioner argues, “[t]herefore, the petitions present materially different challenges, each to a unique subset of ’420 patent claims.” Id. We agree that, because of the uniqueness of the claim interpretations asserted in this proceeding that are not at all related to any of the claims challenged in the prior Petition or to any of the challenges asserted in the prior Petition, the instant, second Petition is justified.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“89–92. With regard to discretionary denial pursuant to Section 314(a), Petitioner states that it “hereby stipulates that, if the PTAB institutes this inter partes review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition.” Id. at 90. Our analysis under Section 314(a) is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).5 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Although Patent Owner cites the Director’s Memo and argues for discretionary denial under Section 314(a), Patent Owner fails to provide any reasoning or explanation as to why we should not follow the guidance of the Director. See Prelim. Resp. 4. Because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Section 314(a).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Our rule relating to claim construction provides that “[a]ny prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. 42.100(b). We have considered the District Court’s claim construction Order and Memorandum (Ex. 1080) that was 6 These alterations in original. timely made of record by Petitioner in this proceeding (Paper 11). Based on our independent review of the ’420 claims and specification, we agree with and adopt the reasoning and conclusion of the District Court that claim 13 should be corrected and rewritten as proposed by the Patent Owner and ordered by the District Court. Therefore, we construe claim 13 by twice replacing “hub” with –host— as shown in claim 13 as reproduced above. See Section I.D. (Challenged Claims) supra.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no additional claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the 7 Claim 20 depends indirectly from claim 18 and directly from claim 19. Ex. 1003, 12:42. controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,420 - PTAB · Aug 27, 2024 · IPR2024-00388 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Other 314aDenied
“reexamination of the ’243 Patent on December 12, 2023,” and argues that, “[i]n view of the finite resources of the Board and the co-pending ex parte reexamination, the Director should deny the Petition under 35 U.S.C[.] § 315(d).”4 Prelim. Resp. 41–42; see id. at 41 (Patent Owner emphasizing the word “termination” in § 315(d)). Patent Owner’s argument about the finite resources of the Board suggests that the Board is conducting the reexamination proceeding. See Prelim. Resp. 46 (Patent Owner referring to “the Board’s reasons for granting the ex parte reexamination,” and asserting that “the Board has made substantive statements about the prior art in the ex parte reexamination by issuing a non-final office action . . . [and, i]n a non-final office action, the Board issued two grounds of rejection.”). The reexamination, however, is being conducted by the Central Reexamination Unit, not by the Board. Thus, the Board’s resources are not being utilized in the reexamination. We determine that, given the circumstance that are present here, discretionary denial of the Petition due to the Board’s resources is not warranted.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“In General Plastic, the Board considered several factors in determining whether to exercise discretion under § 314(a) to deny institution when a party files multiple or “follow-on” petitions challenging the same patent as a previous petition. See General Plastic, Paper 19 at 15–16; see also id. at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” (emphasis added)). Here, it is our understanding that there has been no prior petition challenging the ’243 patent at the Board. The parties do not direct us to any authority extending the application of General Plastic to a situation, such as here, where a reexamination request was filed before a petition. Cf., e.g., Geneoscopy, Inc. v. Exact Sciences Corp., IPR2024-00459, Paper 9 at 32 (PTAB July 26, 2024) (“Given the facts and circumstances of this case, we are not inclined to extend the holding of General Plastic to Petitioner’s prior ex parte reexamination request.”); Dish Network LLC v. Entropic Commc’ns, LLC, IPR2024-00373, Paper 9 at 10 (PTAB July 26, 2024) (“The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.”); Samsung Elecs. Co., Ltd. v. Netlist, Inc., IPR2022-00615, Paper 20 at 21 (PTAB Oct. 19, 2022) (“Patent Owner points to no authority that General Plastic has ever been applied to deny institution of a petition based on a prior reexamination. We decline to extend General Plastic to discretionarily deny the Petition on this basis.”); Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01597, Paper 12 at 45 (PTAB Mar. 12, 2019) (“To the extent that Anza [asks us] to deny institution based on prior reexaminations, it is not explained sufficiently why the rationale of General Plastic extends to such situations. We decline to do so for the first time in this case.” (footnote omitted)). We decline to extend General Plastic to the circumstances in this case. As such, we decline to exercise discretion to deny the Petition under § 314(a) and General Plastic.5 IV.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits. H. Conclusion Regarding the Fintiv Factors We consider “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that the facts weighing against exercising discretion to deny institution collectively outweigh those facts weighing in favor of exercising discretion. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims of the ’243 patent. Accordingly, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc., 138 S. Ct. at 1354, 1359–60; 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. VII. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–20 of the ’243 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976
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.