- PTAB · May 20, 2024 · IPR2024-00189 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–9 on all asserted §103 grounds, finding a reasonable likelihood of success based on Fujiwara, Fujiwara and Arntzen, Bandy and Fowler, and Bandy, Fowler, and Arntzen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on all its challenges to patentability, namely: claims 1–9 as obvious over Fujiwara; claims 1–9 as obvious over the combined teachings of Fujiwara and Arntzen; claims 1– 5 and 8–9 as obvious over the combined teachings of Bandy and Fowler; and claims 1–5 and 8–9 as obvious over the combined teachings of Bandy, Fowler, and Arntzen. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’340 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree).” Pet. 9 (citing Ex. 1009, Tentzeris Decl. ¶ 34). Petitioner also states that “[a]lternatively, a POSITA would have had a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field” and that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of these requirements.” Id. (citing Ex. 1009, Tentzeris Decl. ¶ 34). Patent Owner does not comment of the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As the subject matter of the ’340 patent and the references appears to be consistent with the level of ordinary skill in the art described by Petitioner, we apply Petitioner’s description for purposes of the Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes that the terms of the ’340 patent claims should be given their plain and ordinary meaning as understood by a person of ordinary skill in the art. Pet. 3. Patent Owner contends that Fujiwara does not use the term “planogram” and that Petitioner has not demonstrated Fujiwara discloses the claimed planogram. Prelim. Resp. 19–22. The ’340 patent states “[a] planogram lists the locations of all the electronics labels [3] and of the items on sale in a sales area.” Ex. 1001, 6:35–37. Patent Owner also notes that Fowler states that “[a] planogram is a diagram of fixtures and products that illustrates how and where retail products should be displayed, usually on a store shelf, bin or counter in order to influence consumer selection.” Prelim. Resp. 30 (citing Ex. 1007 ¶ 221). In view of these descriptions of a planogram, we agree with the parties that no further construction of this term is required. slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,674,340 - PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution
The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,212,146 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 21, 2024 · IPR2023-01144 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–8, 10–18, 20–23, 25–38, and 40 based on all petition grounds, finding a reasonable likelihood of success under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner’s showing that a person of ordinary skill in the art would have had reasons to combine the relevant teachings of Hansen and WWiSE based on the express suggestion in Hansen is reasonable and supported.” slip op. at 34
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“4. Discussion At this stage of the proceeding, the prior art status of Zhang is the only dispute between the parties as to the patentability challenge based on Zhang and Maltsev. See Prelim. Resp. 47–56. For the purpose of institution, we need not determine whether Zhang is entitled to the filing date of ’900PROV, because, as explained above with respect to the unpatentability challenge based on Hansen and WWiSE, we have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314. 37 C.F.R. § 42.108(a) (“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.”). The ’566 Patent also claims the benefit of the filing date of Provisional Application No. 61/235,909, filed on August 21, 2009. Ex. 1001, code (60), 1:8–18. “Petitioner does not acquiesce that the ’566 patent is entitled to the priority date of the ’909 provisional.” Pet. 1. We look forward to the development of the full trial record as to the prior art status of Zhang to the ’566 Patent. We note that, although the burden of production may shift between the parties during trial on this issue, the burden of persuasion to show that Zhang is prior art to the ’566 Patent always remains with Petitioner. See Dynamic Drinkware, 800 F.3d at 1379– 80.” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,614,566 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01143 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–6, 8–14, 16–19, 21–30, and 32, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“As an initial matter, for the first time in the Sur-reply Patent Owner contends that we should exercise discretion to deny institution on the basis of the HP district court proceeding and the Acer district court proceeding. Patent Owner did not previously address discretionary denial on the basis of these district court proceedings, but instead addressed “the two parallel district court proceedings involving . . . Dell and Lenovo.” Prelim. Resp. 56; see id. at 56–57. Patent Owner’s arguments are belated and outside the proper scope of a proper sur-reply, and should not be considered. “Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 74 (citing 37 C.F.R. § 42.23). It “does not mean to proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Id. In any event, even if we were to consider Patent Owner’s belated arguments, Patent Owner does not direct us to evidence to support its argument that HP and Acer are real parties-in-interest or privies. Nor does Patent Owner direct us to evidence demonstrating any involvement or control by HP or Acer in this proceeding. Thus, HP and/or Acer’s actions, including whether they raise these same grounds of unpatentability in their respective district court proceedings, should not be imputed to Petitioner.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“has shown a reasonable likelihood of establishing that (1) July 2005 WWiSE is a prior art printed publication and (2) the subject matter of claim 1 is unpatentable as obvious in view of the combination of Hansen and WWiSE. On that basis, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.16” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Petitioner alleges and provides evidence that July 2005 WWiSE was posted to, and continuously publicly available from, sources maintained by IEEE from July, 2005, until the earliest priority date of the ’707 patent. Petitioner further alleges and provides evidence that any interested member of the public could access July 2005 WWiSE during this time period. Although Patent Owner contends that WWiSE could not have been located by a skilled artisan, Petitioner’s evidence shows that WWiSE was made available to members of the TGn Task Group of the IEEE 802.11 WLAN Working Group without any restrictions of confidentiality or limits on dissemination. And, Petitioner provides evidence that interested members of the public would have known to look for WWiSE because the proposals made to IEEE in this time frame were frequently discussed in industry publications. In addition, we note that WWiSE lists over fifty contributors that were associated with a wide variety of technology companies in this space. Ex. 1005, 2–4. The parties may want to consider during trial, and in accordance with our Rules, whether this evidences or otherwise supports public availability. We determine that Petitioner has established the public accessibility of WWiSE sufficiently for the purpose of institution.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,584,262 - Intel Corporation v. Ax WirelessInstitutedPTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., 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 controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,917,272 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01138 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Id. at 22. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2022)18 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id. In the Reply, Petitioner notes that it is not a party to any proceeding brought by Patent Owner, but named Dell and Lenovo as real parties-in-interest. See Reply 1. Petitioner filed stipulations from its real parties-in-interest Dell and Lenovo, in which each of Dell and Lenovo state that they “will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Exs. 1041, 1042. Petitioner further notes that Patent Owner brought four separate district court proceedings asserting the ’459 Patent against Dell, Lenovo, as well as against HP Inc. (“HP”) and Acer Inc. (“Acer”). See Reply 1. According to Petitioner, “[t]he Sotera stipulations from Dell and Lenovo remove any overlap between the present IPR and the Dell and Lenovo litigations.” Id. Petitioner asserts, “[g]iven the Sotera 18 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf stipulations and the Fintiv Memo guidance, the Board should decline to exercise its discretion to deny institution.” Id. at 1–2. In light of the mandatory Fintiv guidance regarding Sotera stipulations discussed above, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. The Sotera stipulations filed by Petitioner’s real parties-in-interest Dell and Lenovo mitigate the concerns of potentially conflicting PTAB and district court decisions as to the disputes between Petitioner, Dell, and Lenovo, and Patent Owner.” slip op. at 53
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,554,459 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01137 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–11, and 13 on both §103 grounds, finding a reasonable likelihood that the Hansen-WWiSE combinations render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’449 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’449 patent on all asserted grounds of unpatentability.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s showing sufficient for institution. Petitioner asserts a combination of Hansen, which splits its Signal*-N field into two symbols, with WWiSE, which appends a second copy of a Signal-N field as an ER-Signal-N field. Ex. 1015 ¶ 97; Ex. 1006, Fig. 11, 69:13–18. WWiSE describes that the Signal-N-containing symbol is followed by the ER-Signal- N containing symbol, which supports Petitioner’s assertion that the combination would start with the first bits of the Signal-N header, which Hansen’s Signal-N header bits are split between two symbols, we do not agree with Patent Owner that there is no reason to split the Signal-N symbol into two symbols in the Hansen-WWiSE combination. We agree that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have found it obvious to try generating and sending two identical symbols followed by the other two identical symbols when combining Hansen and WWiSE. The application of common sense to try a limited number of known options within the technical grasp of a person of ordinary skill may indicate the obviousness of a combination. KSR, 550 U.S. at 421. When applying WWiSE’s teaching that ER-containing symbols follow non-ER symbols to Hansen’s two-symbol, non-ER Signal-N, we are persuaded by Dr. LaPorta’s testimony that a person of ordinary skill in the art would have anticipated success with either alternative 1 (NR symbol followed by same-bit ER symbol) or alternative 2 (both NR symbols followed by both ER symbols). Ex. 1003 ¶¶ 163–165. Because alternative 1 provides the order required by limitations [1J] and [1K], we determine that Petitioner has sufficiently shown its asserted combination to teach those limitations.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 44
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,291,449 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01135 · APJ Michael T Cygan · IPR · Institution
Instituted IPR on claims 1–3, 5, 7–11, and 13 based on two obviousness grounds: Hansen with WWiSE, and Hansen with WWiSE and Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’361 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’361 patent on all asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“shown, for purposes of institution, that each element of claim 1 has been taught or suggested by the combined teachings of Hansen and WWiSE. Further, that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the teachings of Hansen and WWiSE as suggested by Petitioner, and would have a reasonable expectation of success in doing so. On the record before us, and for purposes of institution, Petitioner has sufficiently shown that claim 1 would have been obvious over Hansen and WWiSE. 4. Claims 2–3, 5, 7–11, and 13 Petitioner provides a detailed analysis of the limitations of claims 2–” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,973,361 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01136 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’707 patent on the grounds presented.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,079,707
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.