• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting 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 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Dec 16, 2024 · IPR2024-00976 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution because BOE did not show a reasonable likelihood of prevailing on claims 1–3 under any of its three obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “We have authority to institute an inter partes review where a petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). For reasons that follow, Petitioner does not meet that evidentiary threshold. We decline to reach the issues raised in the Reply or Sur-reply, which relate to Patent Owner’s alternative argument that a discretionary denial of the Petition is warranted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “education could substitute for professional experience and vice versa.” Pet. 26. Patent Owner “does not dispute the level of skill for a person of ordinary skill in the art” as “set forth in the Petition.” Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed definition (Pet. 26) because, on this record, it is consistent with the specification. We take note that neither party indicated that the result would change under any different definition.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner discusses the terms a “data line having a broad-width portion” and a “scanning line having a broad-width portion” recited in claim 1, as well as a “data line having a broad portion” and a “scanning line having a broad-width portion” recited in claim 2. Petitioner cites the ’079 patent for “offering a lexicographic definition of the term ‘broad width’” to support the plain meaning interpretation of the terms “‘broad-width portion’ and ‘broad portion’ as a portion that is broader than another portion of the subject element.” Pet. 16. Patent Owner does not provide arguments directed specifically to Petitioner’s proposed claim constructions. See Prelim. Resp. 10–11. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 16 (addressing issues of claim construction, citing the ’079 patent for supporting the plain and ordinary meaning of “broad-width portion” and “broad portion” without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 10–11 (addressing the merits of Petitioner’s challenges, without asserting an express claim construction). To the extent that the scope of any claim term requires discussion, however, we provide it in the following analysis of the challenges.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Id. (emphasis added). Sato ¶ 26 is entirely silent on scan lines and clearly links the cited benefits to “this arrangement” of “data lines composed of an Al film.” Id. Importantly, Petitioner does not connect Sato’s disclosure, relating to benefits associated with a data line arrangement, to any particular arrangement of scan lines. Sato ¶ 28 is equally deficient. Sato ¶ 28 also discusses benefits of utilizing a specific “arrangement,” namely, “capacitance lines formed of [a] metal film.” Id. ¶ 28. [0028] With this arrangement, the provision of the function as the shading layer with the capacitance lines formed of the metal film, the polysilicon film, or the like, in addition to the function as the wiring, as well as the provision of the function as the light absorption layer with the capacitance electrodes formed of the polysilicon film, or the like, in addition to the function as electrodes, prevents the laminated structure from becoming complex by additionally forming a dedicated shading layer and a dedicated light absorption layer. Accordingly, this arrangement is very advantageous by simply arranging the electro-optical device, and simplifies a manufacturing process thereof. Id. (emphasis added). Here again, Sato ¶ 28 is entirely silent on scan lines and clearly links the cited benefits to “this arrangement” of “capacitance lines formed of metal film.” Id. Petitioner does not bridge the gap in its rationale to combine by attempting to explain why an ordinarily skilled artisan would have extrapolated benefits, pertaining to an arrangement of capacitance lines, to a similar arrangement of scan lines. Petitioner’s witness, Dr. Flasck, provides no further insight as to how or why Sato ¶¶ 26 and 28 would have been understood to apply to scan lines. Dr. Flasck’s comments on Sato ¶¶ 26 and 28 merely repeat, nearly verbatim, the Petition’s conclusory contentions. See Ex. 1002 ¶ 139 (Dr. Flasck declaring “Sato specifically teaches that its device ‘is very advantageous by simply arranging the electro-optical device, and simplifies a manufacturing process thereof.’”); Pet. 37. Dr. Flasck does not cite to any additional supporting evidence other than Sato ¶¶ 26 and 28. Ex. 1002 ¶ 139.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,502,079
• Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Dec 16, 2024 · IPR2024-00977 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 7–13 and 15–20 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a Bachelor’s degree in electrical engineering, computer science, physics, or a similar field and at least two years of experience designing semiconductor display devices, including LCD displays.” Pet. 19. Petitioner also asserts that “[a]dditional relevant work experience can compensate for less education, and vice versa.” Id. On the record presented, Patent Owner “does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 8. Neither party explains why the outcome of this case would be affected by the adoption of any particular proffered definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’606 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “view. First, as Petitioner admits, data line 6a is not connected to image signal line 101d and line 109 other than when sample hold circuit 101c connects them due to shift register 101b outputting an enabling signal. Pet. 49. This is supported by the layout of the four elements in Fujikawa’s Figure 2. Ex. 1005, Fig. 2 (depicting sample hold circuits 101c between and connecting data lines 6a and signal lines 101d). In addition, Patent Owner’s declarant, Dr. E. Fred Schubert, testifies that “two separate lines straddling circuitry are [not] one line.” Ex. 2001 ¶ 64. The dispute between the parties on this issue is largely one of claim construction: should the term “wiring line” in claim 7 be construed broadly enough to encompass a collection of lines separated by a sample hold circuit? In order to determine that Fujikawa discloses or teaches the recited wiring lines, we would need to answer this question in the affirmative. Yet, as discussed above, neither party proposes construing “wiring line,” or any other term used in the claims of the ’606 patent. Pet. 18; Prelim. Resp. 7. The failure to argue for and sufficiently support a broad construction of the term “wiring line” means that Petitioner does not show sufficiently, for purposes of supporting institution of review, that Fujikawa discloses or teaches the “wiring line” limitation of claim 7. b) Conclusion Regarding Claim 7 Based on the record presented, we determine that Petitioner has not shown that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 7 is unpatentable as anticipated by or obvious in view of Fujikawa.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,557,606
• Innoscience America, Inc. v. Infineon Technologies Austria AGInstitution denied
  PTAB · Dec 11, 2024 · IPR2024-00975 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 1. Petitioner also asserts that “[a]dditional education could substitute for professional experience and vice versa.” Id. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–78. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’481 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “On the present record, neither party proposes any claim terms for construction. Pet. 3; Prelim. Resp. 1–78. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “‘run[ning] generally parallel to the lateral extent of a semiconductor material or semiconductor carrier’” and that “[t]he ’481 patent . . . describes a device that ‘has a lateral drift path.’” Pet. 24 (quoting Ex. 1001, 3:14–18, 4:37–38). Patent Owner directs us to a statement in the prosecution history that “[a] lateral transistor is a transistor in which current flows across ‘in the direction parallel to’ the device surface,” as opposed to “a vertical transistor,” in which “[c]urrent ‘flows in the direction normal to’ the device surface.” Prelim. Resp. 8 (quoting Ex. 1002, 33–34). Thus, the parties generally agree that a lateral transistor is a transistor in which current flows in a direction parallel to the surface of the transistor. Petitioner argues that Nega teaches or suggests a transistor in which current flows parallel to the surface because Nega’s source, gate, and drain electrodes “are spread laterally in a lateral drift path, instead of vertically stacked.” Pet. 24–25 (citing Ex. 1005, Fig. 2). Patent Owner argues to the contrary that the placement of source, gate, and drain electrodes in the same lateral plane, rather than in a vertical stack, does not necessarily indicate that the current flow within the transistor is parallel to the surface. Prelim. Resp. 47–48 (citing Ex. 2002, 7–8, Figs. 1.7a, 1.7c). According to Patent Owner, transistors with electrodes in the same horizontal plane can have either lateral or vertical current flow. Id. Thus, Patent Owner argues, the lateral placement of the source, gate, and drain electrodes in Nega does not mean that Nega teaches or suggests a lateral transistor. On the present record, we agree with Patent Owner that Petitioner has not shown sufficiently that Nega teaches a transistor in which current flows in a direction parallel to the surface, rather than in a direction normal to the surface. Transistors with current flow in either direction can have electrodes located on a common horizontal plane, with the direction of the current flow depending on the configuration of doped semiconductor regions located below the electrodes. Ex. 2002, Figs. 1.7a, 1.7c. Because Petitioner relies on the location of Nega’s electrodes, rather than on any particular configuration of doped semiconductor regions in Nega, Petitioner does not show sufficiently that Nega teaches a lateral transistor.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,899,481
• Commscope Technologies LLC v. Belden, Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-01056 · APJ Kimberly Mcgraw · IPR · Final written decision

  CommScope did not prove claims 1–3, 9–14, and 16–18 unpatentable; the asserted anticipation and obviousness grounds failed on the barrier tape’s conductive material extending to the lateral edges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Prior to institution, Patent Owner’s declarant asserted that a POSITA would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry and disagreed that industry experience specifically with respect to twisted-pair data cables was necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner stated, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. In our Decision on Institution, we adopted Petitioner’s proposal of a person of ordinary skill in the art (POSITA) as someone that “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Inst. Dec. 7–8. During the trial, neither party disputed our definition of a POSITA nor argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Reply; PO Resp. 12 n.4 (agreeing the POSITA definition does not impact analysis of issues presented). Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 10

  • Expert testimonyDecided for patent owner

    “Petitioner’s arguments are not persuasive. Mr. Cornelison’s testimony that a POSITA would understand that the tape shown in Figure 13C “has three layers aligned along the side edges” is not credible. See, e.g., Ex. 1006 ¶ 138. Mr. Cornelison’s testimony that Figure 13C is only “intended to identify and illustrate the three different layers of the multi-layer tape,” not to show the relative positions of the layers relative to each other (id. ¶ 137), is belied by his own testimony, in which he states that Figure 13C shows “metallic layer 133 extends to the front edges of dielectric layers 135 and 137 (id. ¶ 136). Additionally, neither Petitioner nor Mr. Cornelison provide persuasive evidence to support the contention that it would take “much more time and be more complex to make all three layers” in Figure 13C offset from each other or that it would be more costly to make than using the customary slitting processes. See Ex. 1006 ¶ 138. Although Mr. Cornelison provides evidence as to how the slitting process can be used to manufacture barrier tape, he does not provide any evidence to support his contention that the proposed slitting processes is in fact less expensive or complex than other methods. See Ex. 1006 ¶ 138. Indeed, Mr. Cornelison does not address the particular methods disclosed in Glew to manufacture the disclosed multi-layer tapes nor persuasively explain why these disclosed methods would be more costly or complex as compared to the “slitting” process. Ex. 1008 ¶¶ 199–201 (stating the multi-layer tapes can be manufactured in a “variety of ways” including bonding the various layers using adhesive or other bonding agents,” mechanically affixing or bonding the layers, needlepunching, thermal bonding, ultrasonic welding, or calendar bonding). We determine that this portion of Mr. Cornelison’s testimony is conclusory and unsupported and is entitled to little weight. Accordingly, Petitioner has not sufficiently shown that Glew discloses conductive material that extends to the lateral edges of the dielectric material as required by claims 1 and 18. As such, Petitioner has not shown a by a preponderance of the evidence that Glew anticipates independent claims 1 or 18 or the challenged claims that depend therefrom.” slip op. at 42

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Thus, although the Specification does not use the term “lateral edge,” the Specification and figures of the ’030 patent make clear, that in the embodiments having a conductive layer that extends to the edges of the dielectric layers of the tape, the referred to “edge” is the edge of the “long side” of the tape that extends in the longitudinal direction. See, e.g., Ex. 1001, 7:49–51 (stating in some embodiments conductive layer 302 may not extend to the edge of tape 110), 8:1–25 (stating, inter alia, pairs 102 could electrically couple to the corresponding edge 306 resulting in increased ANEXT), 8:41–46, 10:30–36 (stating that the tape edge lies over a pair of conducts and the pair generates more ANEXT). Our construction of term “lateral edge” is supported by Roberts, which also refers to the edges of the long side of the tape extending in the longitudinal direction as the “lateral edges.” See, e.g., Ex. 1009, 2:20–24 (“a shield made from a plurality of tapes helically disposed, the lateral edges of which overlap adjacently lying tapes”), 2:42–46 (“a shield composed of a plurality of …, the lateral edges of which overlap adjacently disposed tapes”), 4:27–33 (“the plastic-coated metal foil shield (15) [FIG. 2] has lateral edges that overlap,” “the lateral edges of the shield overlapping one another”), 4:34–40 (“The lateral edges of the helically disposed tapes [of FIG. 3] overlap adjacently lying tapes.”), 5:65-75 (“the shield (15) [of FIG. 10] is made up of a plurality of tapes, the lateral edges of which overlap adjacently disposed like tapes”), Figs. 2, 3, 10. We credit Dr. Eldering’s testimony that these disclosures of Roberts shows that a POSITA would understand that a tape’s “lateral edges” are the edges running along the sides of the tape parallel to the longitudinal direction. See Ex. 2001 ¶¶ 64–65; see also Thales Visionix, Inc. v. United States, 415 F.3d 1335, 1348 (Fed. Cir. 2020) (considering whether the proposed claim construction is “consistent with the prior art’s usage of that term”).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “contentions set forth in its Petition are insufficient to show that Cook discloses a barrier tape having a conductive material contained between two layers of dielectric material where the conductive material extends to each lateral edge of the two layers of the dielectric material, as required by claims 1 and 18, and further that the conductive material be continuous as required by claim 1. We agree with Patent Owner that Petitioner relies on multiple disparate embodiments of Cook for each of these limitations without sufficiently articulating how a single embodiment satisfies the requirements of claim 1 or 18 or articulating how the disparate embodiments may be combined to arrive at claim 1 or 18. See, e.g., PO Resp. 18–25; Pet. 18–21; see also NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (stating in order to establish anticipation, “it is not enough that the prior art reference . . . include multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention” and that the “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”).” slip op. at 29

  Patent outcomesUS 9,991,030 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,991,030
• Urt Umwelt Und Recyclingtechnik GmbH v. Duesenfeld GmbHInstituted
  PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 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 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,050,097
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Oct 11, 2024 · IPR2024-00678 · APJ John A Hudalla · IPR · Institution

  Institution was denied for claims 1, 2, 5, and 6 because Petitioner did not show a reasonable likelihood that either Krantz alone or Krantz and Herrmann rendered them obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the 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.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are persuaded by Patent Owner’s arguments. As noted by Patent Owner (Prelim. Resp. 27), claim 1 separately recites (1) “an authentication module” that seeks access based on “authentication information” and (2) a “gatekeeper” that “formulate[s] an audit request” and evaluates whether to approve access based on a response to the audit request. The fact that authentication can be a part of a security policy audit (see Pet. 38 (citing Ex. 1301, 11:67–12:6)) does not change the fact that claim 1 recites separate sets of limitations for authentication and auditing that Petitioner must account for in its unpatentability contentions.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Patent Owner does not cite any evidence supporting its assessment of the level of ordinary skill. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’645 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’645 patent],” so we “need not expressly construe the claim terms.” Pet. 8. Patent Owner also argues that we should apply the plain and ordinary meaning of all claim terms. Prelim. Resp. 6. Nonetheless, Patent Owner argues that Petitioner deviates from the plain and ordinary meaning of certain limitations. Id. at 6– 7. Thus, Patent Owner puts forth its understanding of the plain and ordinary meaning for the following recitations: “configure an access point in response to approval of the device by the gatekeeper” and “device information received from the device in response to the audit request.” Id. at 7–13. Based on the present record, we need not expressly construe any claim terms in order to render the instant Decision. 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 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,117,645
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Sep 24, 2024 · IPR2024-00540 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–10, 13, 16, 18, and 19 were obvious over Krantz alone or Krantz and Herrmann.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1–2. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’350 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’350 patent],” so we “need not expressly construe the claim terms.” Pet. 7. Patent Owner argues to the contrary that we should construe the phrase “reconfiguring the communication port” as “to change the access point itself [rather than something else] in a way that the checked device is able to access the less-restricted portion of the protected network.” Prelim. Resp. 7–9. Patent Owner also argues that we should construe the phrases “audit data pertaining to a device” and “auditing the device in accordance with a security policy” as “requir[ing] that the ‘audit data’ and ‘auditing’ . . . be expressly about the device” rather that “the user.” Id. at 9–12. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. The ’350 patent distinguishes between user authentication using a username and password and application of a security policy. Ex. 1101, 1:35–39 (“A first level of access control is achieved by requiring authentication of a user. This may be accomplished by requiring the user to enter a username and a password.”), 1:45–48 (“Reliance on mere user authentication includes several disadvantages. For example, there are no provisions to assure that an access device used by the authenticated user meets network security policies.”). Although the ’350 patent describes both user authentication and application of a security policy as being carried out by a gatekeeper, this is accomplished in separate process steps. Id. at 10:38–41 (“GateKeeper 225 authenticates a user, obtains audit data, and applies a security policy in an Authenticate User Step 440, an Obtain Audit Data Step 450 and an Apply Security Policy Step 460, respectively.”). Thus, we are not persuaded that, as Petitioner argues, user authentication in the ’350 patent constitutes the application of a security policy.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,347,350
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16

  • Prior constructionPrior construction adoptedDecided for petitioner

    “For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 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” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. 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§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,880,715
• Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentable
  PTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision

  Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. 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 neededNot reached

    “Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other 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)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29

  Patent outcomesUS 7,653,414 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,653,414

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.