- PTAB · Oct 10, 2023 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR on claims 1–3, 6–14, 16–19, 21–24, and 26–31 on all petitioned grounds; petitioner showed a reasonable likelihood of prevailing on obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain. Pet. 47–75. For the reasons discussed below, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1–3, 6–14, 16–19, 21–24, and 26–31 would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 13 (citing Ex. 1003 ¶ 32). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes. Ex. 1003 ¶ 32. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 12. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms at this stage of the proceeding. Pet. 13; Prelim. Resp. 12–14. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,411,582 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00526 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–20 for the asserted § 103 ground over Frenger and the LTE references, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). A.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13 (citing Haas Decl. ¶ 31). Patent Owner does not address this issue. See generally Prelim. Resp. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim interpretation that measurement reports, where each report is based on measurements from a single terminal, will not satisfy the claim requirement of “receiving measurement reports from the plurality of terminals.” We determine that receiving a first measurement report from one terminal, followed by receiving a second report from a second terminal, and so on, satisfies the plain meaning of this requirement. There is nothing in the ’590 patent that more narrowly defines this requirement, or disavows this plain meaning interpretation. Frenger discloses that: Terminals regularly scan for neighboring cells. The synchronization signals transmitted in a neighboring cell are used to find and synchronize to a potential neighbor. Active terminals typically also report the received signal strength of reference signals (RSRP (Reference Signal Received Power) measurements) transmitted by the neighboring cells to the network, which takes a decision if the terminal should be handed over to the candidate cell. Ex.1004 ¶ 30. When a handover decision is made for a destination cell that is inactive, the network wakes up the idle cell. Id. at ¶ 40. As Patent Owner admits, “Frenger . . . is referring to measurement reports that are in general received from each of the given terminals separately . . . .” Prelim. Resp. 19 (citing Ex. 1004 ¶ 30). Thus, Frenger discloses “measurement reports from the plurality of terminals,” within the plain meaning of that phrase, given that Frenger provides for multiple terminals scanning for neighboring cells, and reporting the results of signal strength measurements.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,210,590 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00525 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1–11 on all asserted grounds, finding a reasonable likelihood that claims 1–3, 5–7, and 9–11 are anticipated by Eisl and claims 1–11 are obvious over Eisl.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner demonstrates that the Examiner overlooked specific teachings of Eisl with respect to the claim limitations that the applicant added to obtain allowance of the challenged claims. In particular, as discussed in detail below, Petitioner presents evidence that Eisl teaches counting “in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network.” See Section II.E.1. As a result, on this record, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a degree in electrical engineering or a similar discipline, with at least two years of relevant industry or research experience, including designing or implementing network systems,” as well as “familiarity with the wireless standards and protocols relating to subscriber management.” Pet. 17. Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. James Olivier. Ex. 1003 ¶¶ 34–43. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,924,500 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Sep 7, 2023 · IPR2023-00581 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 2–6, 11, 14, and 16 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, Patent Owner argues that Angelot previously was presented to the Office during prosecution of U.S. Application No. 14/938,056 (“the ’056 application”), which is “a child of the ’772 [p]atent.” Prelim. Resp. 24, 64–65. Specifically, Patent Owner contends that the Examiner of the ’056 application issued a rejection based on Angelot, and Patent Owner “overcame that rejection.” Id. at 64–65. However, “[u]nder § 325(d), the art and arguments must have been previously presented to the Office during proceedings pertaining to the challenged patent.” Advanced Bionics, Paper 6 at 7 (emphasis added). Here, Patent Owner at most presents evidence that Angelot previously was presented to the Office during proceedings pertaining to an application that claims priority to the ’772 patent. Prelim. Resp. 63–65. Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. See id. Second, Patent Owner argues that Petitioner’s evidence that relaying was known in the art is “cumulative of art cited by [Patent Owner] and considered by the Examiner during prosecution of the ’772 [p]atent.” Prelim. Resp. 52–54. For each asserted ground, Petitioner relies on Angelot for most of the claim limitations and relies on the allegedly cumulative art only to show that relaying was known in the art. Pet. 20–72. But, as discussed above, Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. Thus, on this record, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office. As a result, the first part of the Advanced Bionics framework is not satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a B.S. in Electrical Engineering or a related field with at least five years of experience in designing communication systems.” Pet. 16 (citing Ex. 1002 ¶¶ 34–39). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Daniel Blumenthal. Ex. 1002 ¶¶ 34–39. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 25. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,886,772 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)InstitutedPTAB · Aug 2, 2023 · IPR2023-00360 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–6, finding a reasonable likelihood of success on the asserted obviousness challenges and declining Fintiv denial.
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) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the current record, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and the parties’ minimal investment in the District Court Litigation as to issues of unpatentability outweigh the projected trial date. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“evidence, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that the combination of Backhaus and Logan teaches the subject matter of limitation 1.b of claim 1. Also, on the current record, we determine that Petitioner provides reasons, with rational underpinnings, why a person having ordinary skill in the art would have been motivated to combine the teachings of Backhaus and Logan. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,667,770 - Google LLC v. Flypsi, Inc.InstitutedPTAB · Jul 31, 2023 · IPR2023-00358 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR of claims 1–4 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“evidence that specifically addresses a stay of the District Court Litigation pending this proceeding. See Pet. 58–59; Prelim. Resp. 25–26; Reply 1; Sur-reply 1. We decline to speculate based on the record in this case whether the District Court would grant a stay of the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“had “an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002 ¶¶ 17–18). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bill Lin. Ex. 1002 ¶¶ 17–18. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7; Prelim. Resp. 6. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, Patent Owner’s argument is unavailing. The portion of Backhaus cited by Petitioner discloses “that certain relationship numbers may be used for a plurality of subscriber number and third party number combinations, i.e., in certain embodiments a given relationship number may not be unique to a given subscriber number and third party number combination.” Ex. 1005 ¶ 47 (emphasis added); see Pet. 22–23. Patent Owner appears to interpret the phrase “plurality of subscriber number and third party number combinations” in Backhaus as indicating that a relationship number may be associated with “two or more . . . subscriber” numbers, but “not two or more [third party] numbers.” See Prelim. Resp. 15 (emphasis omitted). We disagree. On this record, we see no reason to interpret the phrase “plurality of subscriber number and third party number combinations” in Backhaus as excluding combinations of one subscriber number with two or more third party numbers. See Ex. 1005 ¶ 47.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,334,094 - Google LLC v. Flypsi, Inc.InstitutedPTAB · Jul 31, 2023 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1, 2, and 4 are anticipated by Backhaus.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“have invested only some resources in the District Court Litigation as to issues of unpatentability involving the ’585 patent. The District Court issued a claim construction order that addresses two terms in the ’585 patent, but the District Court stated only that those terms have their “[p]lain and ordinary meaning.” Ex. 1016, 2. And the evidence of record indicates that fact discovery is ongoing, expert discovery has not begun, and the deadline for dispositive motions is not until October 2023. Ex. 2003, 1–2. Thus, we determine that the third Fintiv factor weighs slightly against discretionary denial of institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bill Lin. Ex. 1002 ¶¶ 17–18. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7–8; Prelim. Resp. 5. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,218,585 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)InstitutedPTAB · Jul 31, 2023 · IPR2023-00359 · APJ James J Mayberry · IPR · Institution
Instituted IPR on claims 1–4 based on all asserted grounds after finding a reasonable likelihood of prevailing and declining Fintiv denial.
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) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the current record, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and the parties’ minimal investment in the District Court Litigation as to issues of unpatentability outweigh the projected trial date. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board need not construe any terms of the challenged claims to resolve the underlying controversy.” Pet. 8. “Patent Owner agrees claim construction is unnecessary at this stage” of the proceeding. Prelim. Resp. 5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Saksena render obvious the subject matter of claim 3. Pet. 3, 43–47. We have reviewed Petitioner’s contentions and citations to the evidence and determine that Petitioner sufficiently demonstrates, at this stage of the proceeding, that dependent claim 3 is unpatentable under 35 U.S.C. § 103 over Backhaus and Saksena. As part of this review, we determine, on the current record, that Petitioner has sufficiently demonstrated that a person having ordinary skill in the art would have had reason to combine the teachings of Backhaus and Saksena to arrive at the subject matter of claim 3, with a reasonable expectation of success. See Pet. 43–47.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,012,554 - Google LLC v. Flypsi, IncInstitutedPTAB · Jul 31, 2023 · IPR2023-00361 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–11 under all asserted grounds, finding a reasonable likelihood that claims 1 and 2 would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and the parties’ minimal investment in the District Court Litigation as to issues of unpatentability outweigh the projected trial date. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to claims 1 and 2 of the ’105 patent. We determine that the record supports institution. Accordingly, we institute an inter partes review of all challenged claims under all grounds set forth in the Petition.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Here, Petitioner contends that no claims require construction at this time. Pet. 5. Patent Owner agrees. Prelim. Resp. 6. However, the parties disagree whether “pre-call” information is information prior to the entire call, or prior to a voice connection during a call. Petitioner asserts that information is the claimed ‘pre-call information” if it is “transmitted before connecting the voice call between the calling and called parties.” Pet. 33. Patent Owner argues that Petitioner “relies on a transmission that is part of the call itself.” Prelim. Resp. 1, 7. Patent Owner argues that Petitioner instead focuses its arguments on “when a voice path” for an incoming call is connected. Id. at 8. Although Patent Owner presents these arguments to distinguish the “via a data channel” limitations, the disagreement necessarily involves the question of when the claimed “call” begins. For purposes of institution, we need not reach a firm construction of the term because Petitioner provides a “second way” of meeting the “pre-call” limitation in which a prior outgoing call has provided the pre-call information that is stored, and then later used when an incoming call is received from the same number. However, because Patent Owner also” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication. . . . More education can supplement practical experience and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill for the purposes of institution. Prelim. Resp. 9. 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 Petitioner, as it is consistent with the ’105 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,051,105 - PTAB · Jul 21, 2023 · IPR2023-00330 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claim 9, finding a reasonable likelihood it would be shown unpatentable as obvious over Tso and Huang; Samaniego was excluded as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, we decline to exercise our discretion to dismiss under 35 U.S.C. §§ 314(a) or 325(d), and determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. Accordingly, we institute an inter partes review of the challenged claim on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the same object . . . can be served directly from the stored copy in proxy server cache”), 6:63–67 (cache manager “maintains a local copy of the partially rendered . . . object in order to avoid repeating some object rendering operations”), 7:23–8:11; Ex. 1003 ¶¶ 67–68, 71, 89–91, 98). But Neogi does not describe caching an object in order to avoid repeating rendering operations upon subsequent requests for the same object. Rather, portions of Neogi cited by Patent Owner describe a pipeline constructed according to control parameters for the user’s request for transcoding, which may include intermediate filtering stages. Ex. 2011, 1:53–60. Neogi’s buffer pools “fulfill the memory requirements of the particular stages of the adaptive pipeline.” Id. at 3:2–4. We agree with Petitioner that Patent Owner’s citations to Neogi do not show the description of a cache that stores partially-rendered content in a local cache to allow subsequent requests to avoid re-rendering or re-retrieving content. See Prelim. Reply 6. Thus, we determine that there were material differences between Huang and Neogi, that Huang is not cumulative of Neogi, and that there is a significant difference between Neogi and Huang, considering the manner in which Petitioner uses Huang in its unpatentability arguments. Having thus evaluated Becton, Dickinson factors (a), (b), and (d) with respect to the facts of the present proceeding, we determine that the same or substantially the same art or arguments were not presented to the Office previously. Thus, we do not proceed to the second prong of the Advanced Bionics framework, and we will not discretionarily deny the Petition under § 325(d). For the foregoing reasons, we are not persuaded to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“content, and tracking cached versions available via Huang’s RHI information. Id. at 18 (citing Ex. 1004, 5:39–41, 14:64–15:6; Ex. 1005, 6:9– 23, 6:23–67; Ex. 1003 ¶ 71). Petitioner argues that the mechanisms in the two references are complementary and that Huang teaches “how to further improve speed and efficiency” in staged transcoding by utilizing local cached content to avoid repeating operations and to track transcoding status of content. Id. at 18–31 (citing inter alia Ex. 1003 ¶¶ 72–73). Petitioner asserts that one of ordinary skill in the art would have had a reasonable expectation of success, as a straightforward application of the teachings of Huang in Tso’s similar staged transcoding system. Id. at 21 (citing, inter alia, Ex. 1003 ¶ 74). At this time, Patent Owner does not comment on Petitioner’s proposed reasons for combining Tso and Huang. With respect to the Petitioner’s proposed combination of Tso and Huang by one of ordinary skill in the art, we find Petitioner has sufficiently shown, on the present record and for the purposes of institution, that a person of ordinary skill in the art would have had reason to combine the teachings of Tso and Huang.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“To begin, the language of section 256 indicates that a certificate of correction issued pursuant to the statute is applied retroactively to the patent in which the correction is made. See Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d 349, 358 (D.N.J. 2008).8 Section 256(b) expressly states that “[t]he error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.” This statutory language has been interpreted to mean that, despite an initial error being made in the naming of the inventor(s), once this error has been corrected, it is as if the patent was valid from the beginning and the defect in inventorship had never happened. See Viskase, 261 F.3d at 1329; see also Emerson Electronic Co. v. Sipco LLC, IPR2016-00984, Paper 52 at 11–21 (PTAB January 24, 2020) (Decision on Remand) (distinguishing the retroactive effect of section 256 from sections 254 and 255, which are prospective). Next, we must consider whether the correction to the inventorship of the ’009 patent can retroactively correct the ’242 patent’s priority claim to the ’009 patent under 35 U.S.C. § 120. If so, Samaniego would no longer be available as prior art because the ’242 patent would then have an inventor in common with the ’009 patent and the ’904 application from which it issued and upon which Samaniego is based.” slip op. at 27
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,495,242
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.