- PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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(a). For the reasons discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit 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 controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - PTAB · Sep 6, 2024 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–4 under § 103 over Ashfary and Mirfakhraei, and claim 2 over Ashfary, Mirfakhraei, and Welles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. “means for determining signal activity” Petitioner contends that the claimed function of “determining signal activity” does not require further construction. Pet. 24 (citing Ex. 1001, claim 2; Ex. 1002 ¶¶ 108–109). As to the corresponding structure, Petitioner asserts that the ’518 patent describes different approaches for determining signal activity. Id. Petitioner states that one approach is to perform a Fast Fourier Transform (FFT) on data samples from an analog-to-digital converter (ADC) using the same receiver signal path that is used for data communication. Id. at 24–25 (citing Ex. 1001, 8:51–9:27, 11:7–23; Ex. 1002 ¶¶ 109–110). Petitioner contends that another approach is to measure received signal power with an envelope detector. Id. at 25 (citing Ex. 1001, 11:23–29; Ex. 1002 ¶ 110). Petitioner asserts that the envelope detector is another corresponding structure for “determining signal activity.” Id. (citing Ex. 1002 ¶ 110).” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We do not agree with Patent Owner’s argument that Mirfakhraei is not in the same field of endeavor, and therefore not analogous, to the ’518 patent. Mirfakhraei’s title, abstract, “Field of the Invention,” and claims describe its bit loading process for multicarrier communications generally, and do not limit its modems or receivers to using telephone lines as the communication medium. Ex. 1006, codes (54, 57), ¶ 1, claims 1–18. Although telephone lines are mentioned in the “Description of the Related Art” and “Detailed Description of the Preferred Embodiments” sections, Mirfakhraei cautions that “[a]lthough the invention has been described with reference to particular embodiments, the description is only an example of the invention’s application and should not be taken as a limitation.” Id. ¶ 36. Accordingly, we do not agree with Patent Owner’s argument that Mirfakhraei’s field of endeavor is limited to telephone lines or DSL, as Patent Owner argues.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 7,295,518 - PTAB · Sep 5, 2024 · IPR2024-00441 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned 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
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems,” and “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we adopt Petitioner’s definition for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“persuaded on the current record that Patent Owner provides sufficient evidence to establish the failure of others. Patent Owner makes much of Broadcom and CableLabs allegedly failing to “realize the possibility of remote spectrum monitoring” prior to the ’008 patent. See Prelim. Resp. 50–52. The mere failure to “realize the possibility” of a certain technique or device, however, is not sufficient to show the failure of others. Rather, the failure of others as an indicium of nonobviousness generally 8 DOCSIS refers to “Data Over Cable System Interface Specification.” Ex. 1011, 1:42–43. relates to situations where others failed while attempting to address a particular problem. See In re Cyclobenzaprine Hydrochloride Extended- Release Capsule Pat. Litig., 676 F.3d 1063, 1081 (Fed. Cir. 2012) (“Evidence that others tried but failed to develop a claimed invention may carry significant weight in an obviousness inquiry. . . . [E]vidence of failed attempts by others could be determinative on the issue of obviousness.” (emphases added)); see also Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1213 (Fed. Cir. 2023) (“Indeed, we have found that ‘[o]bjective considerations such as failure by others to solve the problem . . . may often be the most probative and cogent evidence of nonobviousness.’” (emphasis added)). In this case, Patent Owner does not show sufficiently that any alleged failure experienced by Broadcom or CableLabs (or any other party) occurred attempting to address a pertinent problem.” slip op. at 15
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,792,008 - Freewheel Media, Inc. v. Almondnet, Inc.InstitutedPTAB · Sep 5, 2024 · IPR2024-00413 · APJ Lynne H Browne · IPR · Institution
Instituted IPR on claims 1–7 and 9 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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(a). before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding based on the filing by Petitioner of two additional parallel petitions or due to the alleged lack of particularity in the instant Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“and deny institution in this proceeding (IPR2024-00413) because Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 9. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00414 and IPR2024-00415, we agree with Patent Owner that plural petitions are not warranted. Given our Decisions to Deny Institution in IPR2024-00414 and IPR2024-00415, Patent Owner’s argument is unavailing with regard to the instant Petition.” slip op. at 10
- Other 314aDenied
“We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation grounds failed. Id. at 14. In finding that the petition lacked sufficient particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the instant Petition could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not address the level of skill in the art in its Preliminary Response. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Sep 4, 2024 · IPR2024-00419 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–26 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 14 are obvious over Baig, Banga507, Banga690, and McFarland.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny petition or due to the alleged lack of particularity in the Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“Consistent with the Board’s practice for handling parallel petitions, Petitioner filed a Petition Ranking (Paper 3, “Notice”). See Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019).2 In the Notice, Petitioner ranks this Petition first among the two petitions challenging the ’015 patent and the petition in IPR2024-00420 second. Notice 1. As is discussed in our separate decision in IPR2024-00420, entered concurrently, we have discretion to deny a parallel petition under 35 U.S.C. § 314(a). In view of Petitioner’s ranking and our assessment of the 1 Those ten additional petitions are the following: IPR2024-00413, IPR2024-00414, IPR2024-00415, IPR2024-00416, IPR2024-00417, IPR2024-00418, IPR2024-00421, IPR2024-00422, IPR2021-00423, and IPR2024-00424. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. issue in our institution decision in IPR2024-00420.” slip op. at 3
- Other 314aDecided for petitioner
“violate[s] the ‘particularity requirement of 35 U.S.C. § 312(A)(3).” Prelim. Resp. 8–13. Patent Owner cites the Petition’s eleven grounds based on nine “express” prior art references and 33 other “shadow”9 references and exhibits. Id. at 10–11. Patent Owner asserts that “it is unclear which references Petitioner intends to be (or not to be) part of each of the grounds in its Petition.” Id. at 12. Patent Owner complains about the length of the petition and accompanying declarations. Id. (“The Petition itself is seventynine pages long (13,850 words), and attaches fifty-six exhibits. One of those exhibits is a 349 page declaration from one of Petitioner’s experts.”) (citations omitted). Patent Owner cites the Board’s informative decision in Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 at 24 (PTAB Mar. 6, 2019). We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation 8 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 9 Patent Owner explains that these are exhibits “attached to the Petition and expressly cited and relied upon by Petitioner’s experts.” Prelim. Resp. 11. particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the Petition in this case could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“institution, Petitioner establishes sufficiently that the combination of Baig, Banga507, Banga690, and McFarland teaches or suggests each of the limitations recited in independent claim 1, and that it would have been obvious to combine the teachings of those references. See Pet. 9–38. Petitioner asserts that “[a person of ordinary skill] would have been motivated and would have found it obvious to incorporate these teachings of Banga507, Banga690, and McFarland in Baig’s system to select targeted advertisements for groups of users demonstrating a pattern of accessing the Internet from a shared AP (e.g., at a coffee shop every Sunday) based on the group members’ collective preferences because doing so would have allowed Baig’s modified system to advantageously improve the relevance of the targeted advertisements provided to the group members.” Id. at 12 (citing Ex. 1007 ¶ 39; Ex. 1015 ¶ 54; Lett Decl. ¶¶ 142–146). Petitioner presents an element-by element analysis supported by expert testimony. Id. at 15–30; Lett Decl. ¶¶ 151–237. At this stage, Patent Owner does not address the merits of Petitioner’s challenge.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,564,015 - PTAB · Sep 3, 2024 · IPR2024-00446 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claims 1, 14, and 18 are obvious over Rabenko and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). At this early stage in the proceeding, we find that nothing in the language of the independent claims explicitly requires a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. Additionally, we do not find any definition or disclaimer (explicit or implicit) in the intrinsic record to limit the independent claims a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. See Trustees of Columbia University v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this preliminary stage, we find that the evidence of record supports Petitioner’s position that limitation [18D] is taught by the combined teachings of Rabenko and Kim and Petitioner has provided sufficient reasoning to combine those teachings. We find that Patent Owner’s arguments (Prelim. Resp. 32–56) and Dr. Russ’s testimony (Ex. 2003 ¶¶ 91– 131) do not undermine Petitioner’s showing. Accordingly, we determine Petitioner has shown sufficiently for the purpose of institution that Rabenko and Kim teaches limitation [18D] of claim 18.” slip op. at 33
- Parallel petitionsDenied
“40 asserted grounds are voluminous and excessive. Prelim. Resp. 7, 56–58 (citing Adaptics Ltd. v. Perfect Company, IPR2018-01596, Paper 20, 18 (Mar. 6, 2019) (informative) (“Adaptics”); Uber Technologies, Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (Oct. 23, 2023); Energysource Minerals, LLC, v. Terralithium LLC, IPR2019-01607, Paper 10, 13 (May 4, 2020) (similar)); see also Prelim. Resp. 4. In particular, Patent Owner argues the Petition asserts “at a minimum 40 separate grounds (grounds ‘A’ through ‘NN’), involving eight separate references, challenging claims 1– 20” and “[t]his ‘voluminous and excessive’ number of grounds is an independently sufficient reason to deny institution.” Id. (citing Adaptics, 18). Petitioner challenges claims 1–20. Pet. 9. Fourteen claims, specifically claims 1–7, 10, 12, 14, 15, and 18–20, are challenged on the basis of four grounds, specifically Grounds A–D. Id. Petitioner relies on Lu for teaching a RISC processor recited in claims 1 and 14. Id. at 43–45. Petitioner submits one or two additional references for dependent claims 8, 9, 11–13, 16, and 17. Id. at 10. In view of the above, as well as the complexity of the technology and detailed nature of certain of Petitioner’s arguments, we decline to exercise discretion and deny institution on the basis of the number of grounds asserted.” slip op. at 42
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,223,775 - PTAB · Jul 26, 2024 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all asserted grounds, finding a reasonable likelihood that the Amit, Jacobsen, and Isaksson combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in a petition and the preliminary 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA [(person of ordinary skill in the art)] would have a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Additional education could substitute for professional experience, or vice versa..” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“and Jacobsen. Prelim. Rep. 36–41. Specifically, Patent Owner argues that Amit already identified and solved the reflection problem so there would be no need to make an additional modification to Amit. Id. at 36–37 (citing Ex. 1014, 19:65–20:43). This argument does not negate, however, Petitioner’s contention that a POSITA would have recognized that Jacobsen’s multicarrier modulation would improve upon Amit’s single-carrier modulation by mitigating distortion on the cable network, adapting to channel degradation, and providing increased computational efficiency. Pet. 49–50 (citing Ex. 1016, 312; Ex. 1004 ¶ 173); see KSR, 550 U.S. at 422 (motivation to combine established when POSITA would have appreciated the benefits achieved by the combination).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,295,518 - PTAB · Jul 26, 2024 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’249 patent on all challenges in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“deny institution under § 314(a) based on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–19 (§ II.B.4.i) (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Pet. 88–89; Prelim. Resp. 59–60. General Plastic addresses “[m]ultiple, staggered petitions challenging the same patent and same claims rais[ing] the potential for abuse.” General Plastic, Paper 19 at 17 (emphasis added). 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.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a 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) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and 2–3 years of experience in design or development of signal processing and communication systems or networks. . . . Additional education could substitute for professional experience, or vice-versa. Pet. 6 (citing Ex. 1002 ¶¶ 17–18). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,594,249
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.