- Akin Gump Strauss Hauer & Feld LLP v. Xcential Corp.Institution deniedPTAB · Nov 28, 2023 · DER2022-00004 · APJ Justin T Arbes · DER · Institution
The Board denied institution because Petitioner did not show that Respondent’s claims 1–5 were the same or substantially the same as the allegedly disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown sufficiently that claims 1–5 of Respondent’s ’233 application are the same or substantially the same as the invention allegedly disclosed to Respondent. Consequently, Petitioner has not made a sufficient showing of derivation as to Respondent’s claims 1–5 to warrant institution of this proceeding. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(3)(i). III. CONCLUSION Based on the arguments and evidence presented by Petitioner, substantial evidence, unrebutted, does not support a conclusion that the claims of Respondent’s ’233 application constitute derived inventions. Therefore, we do not institute a derivation proceeding.” slip op. at 29
- BurdenDenied
“same or substantially the same as (i.e., patentably indistinct from) the invention allegedly disclosed to Respondent. As an initial matter, we note that the Petition does not specifically compare the allegedly disclosed invention as a whole to Respondent’s claim 1 and explain “why” they are the same or substantially the same. See 37 C.F.R. § 42.405(b)(3)(i). Rather, Petitioner argues that Mr. Agnello conceived and communicated certain general concepts, then cites certain groups of claim limitations for each concept (without tying such arguments to the particular language of claim 1). See Pet. 34–39 (addressing the preamble of claim 1), 39–41 (grouping limitations [a] and [b] under the general concept of “creating a ‘snapshot document’ including at ‘least one provision of law to be changed’”), 42–46 (grouping limitations [c]–[f] as “known concepts of ‘receiving changes to the snapshot document’ and ‘creating an updated snapshot document’”), 46–50 (grouping limitations [i]–[l] as “known concepts of ‘analyzing the updated snapshot document’”), 50–56 (grouping limitations [n]–[q] under the general concept of “analyzing the XML changes document to generate a bill representation”).5 Petitioner, in its supplemental paper, also ambiguously identifies 37 pages of the Petition as showing where it articulated the invention allegedly disclosed to Respondent. See Supp. 1–2 (citing Pet. 1, 2, 6, 9–13, 17–20, 28, 29, 33–47, 49–55, 58). To determine whether Petitioner has satisfied the requirement of 37 C.F.R. § 42.405(b)(3)(i), we consider the differences between Respondent’s claim 1 and the invention allegedly disclosed to Respondent, and then assess the arguments in the Petition, including those at the cited pages, to determine whether, notwithstanding those differences, Petitioner has shown sufficiently that the two are patentably indistinct.6” slip op. at 19
NonePatents in suitUS 11,989,794 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Nov 9, 2023 · IPR2023-00852 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–15 because Petitioner did not show a reasonable likelihood that Tuan was a prior art printed publication, defeating the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Therefore, we do not institute an inter partes review on the asserted ground as to any of the challenged claims. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Importantly, Ms. Munford’s testimony does not indicate that an ordinary artisan could have located Tuan with reasonable diligence. We additionally find that Ms. Munford’s conclusory assertion that Tuan “was made available to the public” in October 2009 (Ex. 1012 ¶ 11; see also Ex. 1015 ¶ 9) is insufficient to establish public accessibility. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 20
- Obviousness (§103) › Analogous artNot reached
“For these reasons, we determine that Petitioner fails to “identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a combination of a Bachelor’s Degree (or a similar Master’s Degree, or higher degree) in an academic area emphasizing computer science, or a related field, and two or more years of work experience with parallel processing technologies.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address the level of ordinary skill in the art in the Preliminary Response. On the present record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’948 patent (see Ex. 1003 ¶ 21), and for purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,150,948 - Apple Inc. v. Togail Technologies, Ltd.Institution deniedPTAB · Sep 14, 2023 · IPR2023-00720 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the Board must consider whether a person of ordinary skill would have been motivated to combine the prior art to achieve the claimed invention. Nuvasive, 842 F.3d at 1381. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“‘transmitting a second SI request message to the BS only when . . . the prohibit timer expires.’” Pet. 26. This argument that the limitation is obvious is conclusory. The Ding Declaration is repetitive of the Petition without any additional support cited for the conclusions. See Ex. 1003 ¶ 59 (citing Ex. 1007, 2). We give the Ding Declaration little weight where it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB August 24, 2022) (precedential). We agree with Patent Owner. Petitioner’s citations to Oppo show that the SI can be sent regardless of whether or not the timer has expired. For example, the table above shows that a second SI request transmission event may occur without the prohibit timer having expired. Specifically, there is a check as to whether the SI request is “available” or “acknowledged,” and if so, the prohibit timer is stopped, and thus would not run to expiration. See Ex. 1007, table (Proposal 4). Petitioner has not sufficiently shown that the requested SI having been “acknowledged” is the same as the requested SI” slip op. at 14
- Expert testimonyPetitioner expert discountedOther
“‘transmitting a second SI request message to the BS only when . . . the prohibit timer expires.’” Pet. 26. This argument that the limitation is obvious is conclusory. The Ding Declaration is repetitive of the Petition without any additional support cited for the conclusions. See Ex. 1003 ¶ 59 (citing Ex. 1007, 2). We give the Ding Declaration little weight where it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB August 24, 2022) (precedential).” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“IV. PATENTABILITY ANALYSIS A. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art in the field of the ’502 patent, as of April 2, 2018, would have been someone knowledgeable and familiar with the cellular telecommunications arts that are pertinent to the ’502 patent. That person would have at least a master’s degree in electrical engineering, computer engineering, computer science, or a related field from an accredited program and one year of relevant experience in mobile communications or wireless networks. A Ph.D. degree in a relevant field may substitute for some work experience.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,791,502 - Google LLC v. Singular Computing LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00396 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the arguments and evidence before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’775 patent. The Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“specification of the ’775 patent. But that does not mean “input-output unit” automatically can be construed as encompassing anything that has some tangential involvement in getting data into and out of a component which accepts and provides data. The construction still has to be reasonable and consistent with the specification, even under a broadest reasonable interpretation rule of claim construction that is more lenient than the Phillips standard which applies here. See In re Smith International, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). A particular reading is not deemed consistent with the specification simply because the specification does not expressly preclude that reading. Id. at 1382 (“Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the examiner’s interpretation was reasonable, Board Decision, 2016 Pat. App. LEXIS 3764, at *4, was erroneous.”). Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We need not resolve whether, as Petitioner contends, one with ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, to perform, primarily, image processing applications. Even assuming that one of ordinary skill in the art would have made the proposed modification to Schmidt-2000’s KPROC chip, and successfully in doing so, Petitioner still has not made a sufficient accounting for limitations [1E] and [1J] as we explain below. We proceed to analyze claim 1, assuming as Petitioner contends, that one of ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, i.e., registers having 8 bits instead of 16 bits and all execution units, e.g., adders, multipliers, processing 8 bits at a time rather than 16 bits.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00394 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“l) Conclusion For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 1 over Schmidt-2000.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not proposed its own articulation of the level of ordinary skill in the art. Nor has Patent Owner expressed disagreement with Petitioner’s statement of the level of ordinary skill. Patent Owner states: “For the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. On this record, we adopt Petitioner’s proposed level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17
- BurdenNot shown unpatentable
“First, we explained above in Claim Construction Section III.B that it is unreasonable and not consistent with the specification of the ’616 patent to regard a data bus as an “input-output unit.” The analysis need not be reiterated here. Second, because limitation [1E] recites “an input-output unit connected to the first edge processing element and the second edge processing element,” it is unreasonable to treat registers within the first or second edge processing element as the input-output unit. Patent Owner correctly notes (Prelim. Resp. 24) that that would regard an internal reading is illogical and Petitioner points to nothing in the specification of the ’616 patent to indicate that the ’616 patent itself used the “connected to” term in this manner. Third, because neither the global data bus nor registers R48–R63 within each processor can be the claimed “input-output unit,” Petitioner provides no adequate reasoning how the two in combination can be the claimed “input-output unit.” We determine that Petitioner has not sufficiently shown that Schmidt- 2000 discloses limitation [1E].” slip op. at 30
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,754,616 - Amazon.Com, Inc. / Amazon Web Services, Inc. v. Swarm Technology LLCInstitution deniedPTAB · Jul 5, 2023 · IPR2023-00390 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner fails to show a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. We, therefore, do not institute an inter partes review of the challenged claims based on the arguments and evidence presented in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that no inter partes review is instituted as to any claim of the ’777 patent.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or a related field, and about five years of industry or academic research experience in parallel or distributed computing, system architecture, or an equivalent.” Pet. 6 (citing Ex. 1003 ¶¶ 27–28). Petitioner further argues that “[a] post-graduate degree or additional formal education can compensate for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not address the level of skill in the art. See Prelim. Resp. Because it is consistent with the ’777 patent and the asserted prior art, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes construction for the terms “solidarity cell” and “thread(s).” Pet. 6–8. For all other terms, Petitioner argues that “[t]he prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning.” Pet. 6 (emphasis added) Patent Owner does not address claim construction. See Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“combination of Lurie and Ethernet Specification teaches or suggests the disputed limitation. There is no dispute that Lurie teaches that the ATD Mechanism sends the TCWs a notification that a task is available before the TCW obtains its first task. See, e.g., Pet. 32 (“TCWs register with the ATD to receive a notification when tasks first become available.”). For example, Lurie describes how the ATD Mechanism sends a notification and that the TCW responds to that notification by obtaining a task: “The automatic task distribution mechanism 260 provides notification (step 538) to the technical computing worker 260 of the availability of the task. In response to receiving the notification (step 540), the technical computing worker obtains (step 544) the task provided (step 540) from the automatic task distribution mechanism 260.” Ex. 1007 ¶ 86; see also Ex. 1007, Fig. 5B (steps 538, 540, 544); Prelim. Resp. 29–30. Similarly, Lurie describes how the TCW receives a notification before obtaining a task: “When the task is submitted to the object exchange repository 662 by the job manager 265, the technical computing worker 270 receives a notification and takes the task from the object exchange repository 662 by performing a take operation.” Ex. 1007 ¶ 97; see also Prelim. Resp. 29. Lurie also describes how a notification is sent prior to a TCW taking a task when the system is operating in batch mode. See Ex. 1007 Fig. 5C (steps 538, 540, 542, 544). Because the TCW only takes a task after a notification, it is not acting proactively. See Ex. 2001 ¶ 50. Instead, the TCW is reacting to a notification that tasks are available. Nor are we sufficiently persuaded by Petitioner’s argument that the notification is only required for the first task and that for all other tasks, the TCW will obtain the task without notification using the bag-of-tasks model. See Pet. 33–37. Assuming Petitioner is correct in that Lurie uses the bag-oftasks model, the TCW still requires the first notification before it starts obtaining tasks. As Dr. Lowenthal explains, the notification is required to “kick off the procedure.” Ex. 1003 ¶ 196. Because of the undisputed need for the initial notification, it does not matter that the TCW can obtain additional tasks without further notifications. A cell that sometimes needs a notification to obtain a task is not proactive; rather, it is at least partially reactive.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,146,777 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · May 31, 2023 · IPR2022-01566 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over grounds relying on Tuan, which was not shown to be a printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Id. ¶ 11; see id. at pp. 22–30 (Appendix TUAN01). Ms. Munford does not otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan “was made available to the public” (id. ¶ 11) is insufficient. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“identify, with particularity, evidence sufficient to establish a reasonable likelihood that Tuan was publicly accessible before the critical date. See Hulu, IPR2018-01039, Paper 29 at 13. As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a printed publication. See id. Each of the grounds presented in the Petition relies on a combination of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not shown a reasonable likelihood that it will prevail with respect to its assertions that claims 1–8 would have been unpatentable over the proposed combinations of Kupferschmidt and Tuan. As a consequence, we do not institute an inter partes review.” slip op. at 16
§ 102 anticipationcites KSR · GrahamPatents in suitUS 11,036,556 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Tot Power Control, S.L.Institution deniedPTAB · May 2, 2023 · IPR2022-01536 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because neither asserted obviousness ground showed a reasonable likelihood of establishing claims 1–12 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–12 of the ’865 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’865 patent “would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or related field, with 2-3 years of experience in telecommunication systems and knowledge of telecommunication standards, with superior education compensating for less work experience.” Pet. 18 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 20–21. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review, except that we do not include the qualifier “at least,” which would expand the required amount of education and experience indefinitely.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 17–18. Patent Owner submits that, at this stage of the proceeding, we should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“received (SIRrec) based on a data signal (107, 108) received from a base station (102, 103) or mobile station (104).” Ex. 1001, 8:48–50. For this limitation, which relates to closed (inner) loop power control, Petitioner relies on a combination of Laakso and TS214. Pet. 35. First, Petitioner contends that Laakso discloses closed loop power control in WCDMA. Id. (citing Ex. 1005, 2:14–23, 8:28–9:8, 9:20–30; Ex. 1003 ¶ 105). Petitioner also contends that a person of ordinary skill in the art would have been aware of closed loop power control standards, such as TS214, which require estimating SIR based on a data signal received from a base station or mobile station. Id. (citing Ex. 1006, 12–15 (§ 5.1.2.2), 49 (Annex B.2); Ex. 1003 ¶ 105). Petitioner further contends that a person of ordinary skill in the art would have been motivated to combine Laakso’s outer loop power control success. Id. (citing Ex. 1003 ¶ 105); id. at 29–33 (citing Ex. 1003 ¶¶ 92–101) (addressing motivation to combine Laakso and TS214).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,865 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition (35 U.S.C. § 314(a)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - Alarm.Com, Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00728 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“After considering the Petition and associated evidence, we exercise” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision and to the extent necessary, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose constructions for any claim terms. See Pet. 6 (citing 37 C.F.R. § 42.100(b)). On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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 12
Claim constructionDiscretionary denialPatents in suitUS 9,349,262
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.