- 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 - 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 - PTAB · Apr 1, 2024 · IPR2023-01360 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 3. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (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 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless communication systems.” Pet. 5, n.1; Ex. 1003 ¶ 17. Dr. Butler further states that “[m]ore education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner states that “[f]or the purposes of this preliminary response,” it “does not challenge that definition.” Prelim. Resp. 3. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and Dr. Butler and not disputed by Patent Owner as reasonable and consistent with the prior art. See Okajima v Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the present record, we determine that Petitioner has made a sufficient showing as to this limitation for purposes of institution. In this regard, Petitioner has introduced sufficient evidence at this stage of the proceeding that one of ordinary skill would have been motivated to combine Rao and Araujo as Petitioner proposes. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have found it obvious to combine a Remote Access Client as taught by Rao with a PPM and request deflector as taught by Araujo to provide a client that better ‘use[s] the energy in a way that strikes a balance between providing functionality and maintaining longevity of the charge.’” Ex. 1003 ¶ 75. It also includes Dr. Butler’s testimony that, in implementing Rao’s filtering, prioritization, and queuing functionality, one of ordinary skill “would have perceived opportunities for improving the policy management capabilities already present in Rao to impart additional advantages, such as optimizing power use,” and would have known that “mobile devices use techniques for optimizing the use of constrained resources, including network bandwidth and battery power.” Id. ¶ 77. Dr. Butler further explains that one of ordinary skill “would have recognized the importance of power management at least because, in mobile devices, applications cannot execute without sufficient power.” Id. Additionally, Dr. Butler testifies that, for these reasons, one of ordinary skill “would have looked to policy-based power management such as taught in Araujo to serve as one of Rao’s ‘multitude of ways to define client-side application priorities,’” to create a device that “would both manage power according to the PPM techniques of Araujo and manage network use according to the techniques of both Rao and Araujo.” Id. ¶ 78. And, Dr. Butler explains, based on Rao and Araujo, one of ordinary skill “would have understood and found obvious that policy enforcement” in the Rao-Araujo combination “may be based on application state (foreground, background) and power state (battery/plugged-in). Id. ¶ 80. We determine that this testimony is reasonable and credible based on the record presently before us, and is unrebutted by countervailing evidence from Patent Owner. We also determine that Petitioner has introduced sufficient evidence that one of ordinary skill would have had a reasonable expectation of success in achieving the proposed Rao-Araujo combination. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have expected success integrating a PPM and deflector components as taught by Araujo into a remote access client as taught by Rao,” that “the request deflector (Araujo) and packet capture mechanism (Rao) serve similar functions,” and that “[c]ombining such functions would have required only routine programming skill well within the skill set of” a person of ordinary skill. Ex. 1003 ¶¶ 81, 83.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,609,544 - PTAB · Mar 25, 2024 · IPR2023-01336 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–25 over all asserted grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework: (1) 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, 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).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“individually, rather than the combined teachings of Rao and Oestvall that are asserted in the Petition. As Petitioner explains, Oestvall teaches the claimed selective blocking because “Oestvall’s device prevents the application from ‘being given any services or consuming any resources,’ so a POSITA would have understood and found obvious that such prevention would block the application’s access to network resources (e.g., WWAN modem).” Pet. 29 (quoting Ex. 1006 ¶ 23). In addition, “Oestvall describes that its scheduler regulates access to resources by an untrusted application depending on whether the application runs in the background or foreground.” Id. at 29. Petitioner also explains why a skilled artisan would have been motivated to employ Oestvall’s blocking strategy in Rao—“to increase device efficiency where device operation increases battery consumption, such as when the device is engaged in network activity over a WWAN network.” Id. at 31. Thus, even if Patent Owner is correct in its characterizations of Rao, those arguments do not ultimately undermine obviousness because Petitioner adequately explains how Oestvall teaches the features allegedly missing in Rao.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 3; see generally Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,137,701 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) 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, 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).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- 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). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 16 and 17 for all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) 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, 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).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry of equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).” slip op. at 8
- 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§ 103 obviousnessDiscretionary denialPatents in suitUS 8,461,719 - PTAB · Feb 8, 2024 · IPR2023-01226 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework: (1) 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, 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). Here, Petitioner relies on D’Amore, a reference that was not before the examiner, for teaching claim limitation [1.6], which requires “a selected subset of the background network service usage activities are deferred until network congestion is no longer indicated.” Pet. 7, 36–37. We agree with Petitioner that D’Amore is not cumulative of Cole. Pet. Reply 3–4. Specifically, D’Amore teaches that “different priority levels (e.g., high or low) are assigned to applications” and “access by the lower priority applications is restricted or deferred when the network is congested.” Pet. 40 (citing Ex. 1006 ¶ 60–61, 70–72); see Prelim. Resp. 22. Cole’s relevant disclosure, in contrast, is more generic. It teaches aborting “certain bandwidth activities” and “reschedul[ing] the aborted activity at a later time, presumably when the bandwidth load will be decreased or a better connection will be available.” Pet. 34 (citing Ex. 1005 ¶¶ 75, 80); see Prelim. Resp. 22. As compared to Cole, D’Amore’s disclosure more clearly teaches what is deferred in limitation [1.6] (“a selected subset of the background network service usage activities”) and the deferment’s extent (“until network congestion is no longer indicated”). Thus, Patent Owner has not shown that part one of the Advanced Bionics framework is met.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 3; see generally Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) at least two years of industry experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s definition at this stage of the proceeding. Prelim. Resp. 7. On this record, we agree with Petitioner’s definition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness contentions. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its challenges to claims 1–20. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’773 patent is unpatentable. We therefore institute trial on all challenged claims and grounds raised in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or as to the construction of any claim term. Any final determination will be based on the record developed during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,237,773 - PTAB · Jan 22, 2024 · IPR2023-01157 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds, finding a reasonable likelihood that the challenged claims would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework: (1) 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, 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).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 2; Prelim. Resp. 8. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s definition at this stage of the proceeding. Prelim. Resp. 8. On this record, we agree with Petitioner’s definition.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Patent Owner’s argument. While Rao’s packet- level control is different from the claims’ and D’Amore’s application-level control, that difference does not undermine or counsel against application-level control. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.”) (internal quotation marks omitted). To the contrary, as Petitioner explains, both the packet-level and application-level control methods further the same design objective of proactively preventing overloaded connections that impact performance. See Pet. 22. Moreover, nothing in Rao’s packet-level control undermines Petitioner’s explanation that one skilled in the art would implement a different feature of Rao— Rao’s application association—as a known way “to identify application traffic at the packet level, allowing for inter-application classification of activities based on protocol.” Id. at 21. In light of Petitioner’s rationale, as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Rao’s packet capture mechanism, which identifies an application associated with each packet, with the Cole-D’Amore system that does application-level control. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,405,224 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 10, 11, 25, 27, and 30 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art According to Petitioner, [a] person having ordinary skill in the art . . . relevant to the ’583 patent as of November 26, 2017—the earliest possible priority date of the ’583 patent—would have had at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4–5 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 4. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 12
- 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). Neither party proposes an express construction for any claim terms at this stage of the proceeding. Pet. 5; Prelim. Resp. 8–9. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,055,583
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.