- Ericsson Inc. v. Dali Wireless Inc.InstitutedPTAB · Feb 1, 2023 · IPR2022-01212 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–12 because Ericsson showed a reasonable likelihood that claims would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–12 of the ’338 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_di strict_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, . . . Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 81.” slip op. at 55
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the claim language, limitation vii recites “reconfiguring each remote radio unit by: determining a load percentage for each remote radio unit.” Claim 1 simply does not specify how to determine the load percentage for each remote radio unit and “load percentage” is a broad term. Stated differently, claim 1 does not specify the numerator or denominator to be used in determining the load percentage, but the parties agree that the numerator is the amount of load used in an RRU, as indicated above. On this preliminary record, Petitioner’s interpretation of “available capacity” as including “a single radio, a group of radios or the entire DAS system, [able to] be determined using throughput, number of connections, number of users, number of carriers, or power,” is sufficient for purposes of institution. See Pet. Reply 3 (citing Ex. 1005, 4:24–27; 5:13–15; 6:1–4; Ex. 1003 ¶¶ 104–06). On this preliminary record, as Petitioner argues (Pet. Reply 2) and contrary to Patent Owner’s construction, the claim language and the specification do not support limiting available capacity to a single RRU, or similarly, limiting the scope of “load percentage” to a load consumed by a remote radio unit divided by the assigned available capacity for that remote radio unit.6” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,682,338 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370 - Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentablePTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10
Patent outcomesUS 9,671,955 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,671,955 - Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01149 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and the respective additional reference in each trial.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentableNonecites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision
Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnessPatents in suitUS 6,418,556 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - Securus Technologies, Inc. v. Global Tel*link CorporationInstitution deniedPTAB · Oct 11, 2017 · IPR2017-01177 · APJ Kevin F Turner · IPR · Institution
Instituted review of claims 1–20: claims 1–6 and 8–15 on obviousness over Otto, and claims 7 and 16–20 on obviousness over Otto, Gainsboro, and San Martin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we conclude that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–20 of the ’250 Patent are unpatentable. The Board has not made a final determination with respect to the patentability of these claims. The Board’s final determination will be based on the record as developed fully during trial.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether “the same or substantially the same prior art or arguments previously were presented to the Office.” To evaluate this criterion, we examine what arguments and art were presented to and considered by the Examiner during prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243 indicates Otto was included in an Information Disclosure Statement by the Applicant), the Examiner did not rely on Otto in any rejection of the issued claims in view of Otto. We are further persuaded that the Examiner has not been shown to have considered Otto in the instant context, i.e., with claims 10 being argued as being obvious over Otto and with declaration testimony opining that the claims would have been obvious over Otto (Ex. 1002). Patent Owner also faults Petitioner for not distinguishing Otto from San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a petitioner to distinguish the disclosures of newly applied and previously applied prior art references. Patent Owner points out similarities in the disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate what similar portions of Otto and San Martin would have been considered in finding certain claims allowable. See Ex. 1004, 219. Such a consideration is important because Patent Owner incorporated the allowable subject matter into the independent claims to gain allowance. See Ex. 1004, 290. At this stage of the proceedings, we are persuaded that that there is a reasonable likelihood that Petitioner would prevail in showing the subject matter of the independent claims are taught or suggested by Otto, and as discussed below, we are not persuaded that the disclosures of Otto and San Martin are necessarily cumulative.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“With respect to the level of ordinary skill in the art, Petitioner asserts that such a person “would have held at least a bachelor’s degree in electrical engineering, computer engineering, or a similar field, and had at least two years of experience (or the academic equivalent) working with speaker-dependent voice recognition in the context of telecommunications.” Pet. 7 (citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate characterization at this time. As such, we adopt Petitioner’s statement of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Hence, we determine that “match” would have been understood as determining whether two data items are identical or finding a data item that is identical to a key. See Ex. 3001. Furthermore, we determine that “substantially” would have been understood as to a great or significant extent, or for the most part or essentially. See Ex. 3002. Therefore, we determine that the broadest reasonable construction, consistent with and in 7 the context of the specification, of “substantially matches” is “determining whether two data items are for the most part or essentially identical.” See also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“Expressions such as “substantially” are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.”)); see, e.g., Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (explaining that “like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to avoid a strict numerical boundary to the specified parameter”) (citation omitted). Although Petitioner does not proffer an explicit construction for the claim term “substantially matches,” Petitioner does argue that the prior art discloses “both exact matches and matches that deviate from exact matches by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we are persuaded that Petitioner is implicitly applying a claim construction of “substantially matches” that comports with the broadest reasonable construction determined herein.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites NautilusPatents in suitUS 9,521,250
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.