- Fervo Energy Co. v. Ormat Technologies Inc.Institution deniedPTAB · Sep 18, 2024 · IPR2024-00665 · APJ Josiah C Cocks · IPR · Institution
Institution denied because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable under the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends the following assessment in connection with a person of ordinary skill in the art: The Challenged Claims pertain to a method of recovering geothermal heat. However, “[m]any of the techniques are derived from oil and gas industry.” EX1001 at 4:23-24. Accordingly, here, a person of ordinary skill in the art (“POSITA”) is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Chemical Engineering, Petroleum Engineering, Energy Resource Engineering, or the like, or at least five years of experience engineering, drilling, and constructing wells. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could also have met the relevant standard for a POSITA. Pet. 16–17 (citing Ex. 1004 ¶¶ 34–36). Patent Owner does not offer its own assessment of a POSITA. For purpose of this Decision, we adopt Petitioner’s assessment.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“own for any claim term. Patent Owner does, however, note that “claim element 9c[13] includes the terms ‘means for,’ which are presumed to invoke 13 The referenced “claim element 9c” reads in-part “Means for producing a water density difference and a pressure difference between said first means-plus-function treatment under Section 112.” Prelim. Resp. 17 (citing Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 at 11 (PTAB Mar. 15, 2023) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part))). Patent Owner further submits that “[u]nder Rule 104(b)(3),[14] Petitioner had an obligation to provide a construction of claim element 9c that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Id. We agree with Patent Owner that the term “means for” when appearing in a claim triggers a rebuttable presumption that treatment under § 112 applies. On the record before us, however, Petitioner has not explained why the noted presumption has been rebutted or does not apply, and has not provided a construction of the pertinent “means for” term in the Petition in contradiction to the requirements of 37 C.F.R. § 104(b)(3).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“While it is certainly the case that “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art,” see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992), it is incumbent on a petitioner, in advancing a permissible theory of obviousness, to explain why a skilled artisan would recognize to pick and choose certain aspects of a reference and combine them with other aspects of the reference, particularly so where the reference itself does not suggest such combination. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests” ) (citation and inner quotes omitted). Here, Petitioner’s oscillation between different embodiments of Rinaldi in an attempt to reach the requirements of claim 1 is not adequately explained, and more closely resembles impermissible hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). In sum, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its assertion that claim 1 is unpatentable as a part of Petitioner’s proposed Ground 1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,320,221 - PTAB · Sep 12, 2024 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 4–6 and 8 on all asserted grounds, finding a reasonable likelihood that claims 4–6 and 8 are obvious over Lee1 and Lee2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), 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.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’207 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We preliminarily adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When construing claim terms, we first review the language of the claims. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). The claim recites four terms: “preambleInitialReceivedTargetPower(0),” “preambleInitialReceivedTargetPower(1),” “powerRampingStep(0),” and “powerRampingStep(1).” Ex. 1001, 36:57–62. These terms represent outputs of, or values dependent on, inputs (0) or (1). Id. at 29:30–53; Ex. 2002 ¶¶ 21– 23. Given that claim 4 separately lists initial power values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1),” we are skeptical of Petitioner’s argument that these two values should be construed to mean a single value (i.e., preambleInitialReceivedTargetPower), because that would render the separate listing superfluous. Moreover, if the two values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1)” were construed to mean single value preambleInitialReceivedTargetPower, the additional “(0)” and “(1)” claim language would be superfluous. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”); Dig.-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (noting “the importance of construing claim terms in light of the surrounding claim language, such that words in a claim are not rendered superfluous”); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court’s claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the prior art need not explicitly disclose or explicitly suggest the proposed modification (here, at least according to Patent Owner, making initial power and power ramping dependent on procedure type), the absence of precise teachings regarding the proposed modification does not undermine the grounds of unpatentability. Lee2 discloses initial power and power ramping functions dependent on input. Ex. 1006 ¶¶ 63, 71–74. Specifically, Lee2 discloses using, based on measured signal power (RSRP), event/distance as input for initial power and power ramping. Id. Lee2 does not, nor could it, address using procedure type as input for initial power and power ramping because Lee2 only discloses 1 type of procedure––the conventional 4-step. Ex. 1006, Fig. 3. Per Lee1, reducing from the conventional 4-step to 2-step is a development in the technology to reduce time delay. Ex. 1005 ¶ 6. Although not discussed in Lee1, the prosecution history shows that switching from 4-step to 2-step is similarly based on measured RSRP. Prelim. Resp. 39 (discussing prosecution history); Ex. 4039–40. Patent Owner’s declarant also acknowledges that there is a correlation (albeit unreliable) between RSRP and distance. Ex. 2002 ¶ 27 (“RSRP may or may not correspond to distance in the real world due to various wireless artifacts . . . .”). Accordingly, we are preliminarily persuaded that a person of ordinary skill in the art, facing the needs created by the development of new types of procedures (i.e., the 2-step), and upon recognizing the link between event/distance, procedure type, and measured RSRP, would have, in light of Lee2, seen a benefit and had a reasonable expectation of success in using initial power and power ramping functions dependent on procedure type.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,932,207 - PTAB · Sep 6, 2024 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–4 under § 103 over Ashfary and Mirfakhraei, and claim 2 over Ashfary, Mirfakhraei, and Welles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. “means for determining signal activity” Petitioner contends that the claimed function of “determining signal activity” does not require further construction. Pet. 24 (citing Ex. 1001, claim 2; Ex. 1002 ¶¶ 108–109). As to the corresponding structure, Petitioner asserts that the ’518 patent describes different approaches for determining signal activity. Id. Petitioner states that one approach is to perform a Fast Fourier Transform (FFT) on data samples from an analog-to-digital converter (ADC) using the same receiver signal path that is used for data communication. Id. at 24–25 (citing Ex. 1001, 8:51–9:27, 11:7–23; Ex. 1002 ¶¶ 109–110). Petitioner contends that another approach is to measure received signal power with an envelope detector. Id. at 25 (citing Ex. 1001, 11:23–29; Ex. 1002 ¶ 110). Petitioner asserts that the envelope detector is another corresponding structure for “determining signal activity.” Id. (citing Ex. 1002 ¶ 110).” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We do not agree with Patent Owner’s argument that Mirfakhraei is not in the same field of endeavor, and therefore not analogous, to the ’518 patent. Mirfakhraei’s title, abstract, “Field of the Invention,” and claims describe its bit loading process for multicarrier communications generally, and do not limit its modems or receivers to using telephone lines as the communication medium. Ex. 1006, codes (54, 57), ¶ 1, claims 1–18. Although telephone lines are mentioned in the “Description of the Related Art” and “Detailed Description of the Preferred Embodiments” sections, Mirfakhraei cautions that “[a]lthough the invention has been described with reference to particular embodiments, the description is only an example of the invention’s application and should not be taken as a limitation.” Id. ¶ 36. Accordingly, we do not agree with Patent Owner’s argument that Mirfakhraei’s field of endeavor is limited to telephone lines or DSL, as Patent Owner argues.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 7,295,518 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - PTAB · Sep 5, 2024 · IPR2024-00441 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems,” and “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we adopt Petitioner’s definition for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“persuaded on the current record that Patent Owner provides sufficient evidence to establish the failure of others. Patent Owner makes much of Broadcom and CableLabs allegedly failing to “realize the possibility of remote spectrum monitoring” prior to the ’008 patent. See Prelim. Resp. 50–52. The mere failure to “realize the possibility” of a certain technique or device, however, is not sufficient to show the failure of others. Rather, the failure of others as an indicium of nonobviousness generally 8 DOCSIS refers to “Data Over Cable System Interface Specification.” Ex. 1011, 1:42–43. relates to situations where others failed while attempting to address a particular problem. See In re Cyclobenzaprine Hydrochloride Extended- Release Capsule Pat. Litig., 676 F.3d 1063, 1081 (Fed. Cir. 2012) (“Evidence that others tried but failed to develop a claimed invention may carry significant weight in an obviousness inquiry. . . . [E]vidence of failed attempts by others could be determinative on the issue of obviousness.” (emphases added)); see also Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1213 (Fed. Cir. 2023) (“Indeed, we have found that ‘[o]bjective considerations such as failure by others to solve the problem . . . may often be the most probative and cogent evidence of nonobviousness.’” (emphasis added)). In this case, Patent Owner does not show sufficiently that any alleged failure experienced by Broadcom or CableLabs (or any other party) occurred attempting to address a pertinent problem.” slip op. at 15
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,792,008 - PTAB · Aug 27, 2024 · IPR2024-00388 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Other 314aDenied
“reexamination of the ’243 Patent on December 12, 2023,” and argues that, “[i]n view of the finite resources of the Board and the co-pending ex parte reexamination, the Director should deny the Petition under 35 U.S.C[.] § 315(d).”4 Prelim. Resp. 41–42; see id. at 41 (Patent Owner emphasizing the word “termination” in § 315(d)). Patent Owner’s argument about the finite resources of the Board suggests that the Board is conducting the reexamination proceeding. See Prelim. Resp. 46 (Patent Owner referring to “the Board’s reasons for granting the ex parte reexamination,” and asserting that “the Board has made substantive statements about the prior art in the ex parte reexamination by issuing a non-final office action . . . [and, i]n a non-final office action, the Board issued two grounds of rejection.”). The reexamination, however, is being conducted by the Central Reexamination Unit, not by the Board. Thus, the Board’s resources are not being utilized in the reexamination. We determine that, given the circumstance that are present here, discretionary denial of the Petition due to the Board’s resources is not warranted.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“In General Plastic, the Board considered several factors in determining whether to exercise discretion under § 314(a) to deny institution when a party files multiple or “follow-on” petitions challenging the same patent as a previous petition. See General Plastic, Paper 19 at 15–16; see also id. at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” (emphasis added)). Here, it is our understanding that there has been no prior petition challenging the ’243 patent at the Board. The parties do not direct us to any authority extending the application of General Plastic to a situation, such as here, where a reexamination request was filed before a petition. Cf., e.g., Geneoscopy, Inc. v. Exact Sciences Corp., IPR2024-00459, Paper 9 at 32 (PTAB July 26, 2024) (“Given the facts and circumstances of this case, we are not inclined to extend the holding of General Plastic to Petitioner’s prior ex parte reexamination request.”); Dish Network LLC v. Entropic Commc’ns, LLC, IPR2024-00373, Paper 9 at 10 (PTAB July 26, 2024) (“The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.”); Samsung Elecs. Co., Ltd. v. Netlist, Inc., IPR2022-00615, Paper 20 at 21 (PTAB Oct. 19, 2022) (“Patent Owner points to no authority that General Plastic has ever been applied to deny institution of a petition based on a prior reexamination. We decline to extend General Plastic to discretionarily deny the Petition on this basis.”); Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01597, Paper 12 at 45 (PTAB Mar. 12, 2019) (“To the extent that Anza [asks us] to deny institution based on prior reexaminations, it is not explained sufficiently why the rationale of General Plastic extends to such situations. We decline to do so for the first time in this case.” (footnote omitted)). We decline to extend General Plastic to the circumstances in this case. As such, we decline to exercise discretion to deny the Petition under § 314(a) and General Plastic.5 IV.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits. H. Conclusion Regarding the Fintiv Factors We consider “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that the facts weighing against exercising discretion to deny institution collectively outweigh those facts weighing in favor of exercising discretion. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims of the ’243 patent. Accordingly, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc., 138 S. Ct. at 1354, 1359–60; 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. VII. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–20 of the ’243 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00578 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, and 9 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we deny institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: The ’826 Patent describes and claims aspects and functionality of cable and satellite television signal processing and communication systems. As of the alleged September 8, 2011 priority date, a person of ordinary skill in the art (“POSITA”) of the ’826 Patent would have had at least: i) a Bachelor of Science in electrical engineering or an equivalent subject and three or more years of experience working in the field of cable and/or satellite signal processing and communication systems; ii) a Master’s in electrical engineering or an equivalent subject and one or more years of experience working in the field of cable and/or satellite television signal processing and communication systems; or iii) a Ph.D. in electrical engineering or an equivalent subject and at least some experience working in the field of cable and/or satellite television signal processing and/or communication systems. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 9 (citing Ex. 1003 ¶¶ 30–31) (internal citation omitted). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties indicate that the district court in the Charter case (2:22-cv-00125) construed “network management messages” in the claims of the ’826 patent to mean “messages which report on the network based on the measured characteristics.” Pet. 10 (citing Ex. 1009, 29); Prelim. Resp. 10. Petitioner contends this construction is consistent with the ordinary and customary meaning of the claim language. Pet. 25. Patent Owner asserts that, in the Cox case (2:23-cv-01049), the parties agreed that “network management messages” should be given its plain and ordinary meaning. Prelim. Resp. 10 (citing Ex. 2001, 2). Patent Owner asserts that its arguments “do not turn on the construction of ‘network management messages’ so there is no need to construe that, or any other, term of the ’826 Patent claims at this stage of the proceeding.” Id. As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10
- BurdenNot shown unpatentable
“While Petitioner mentions portions of Renken that it considers relevant to limitation 1h, Petitioner does not explain how it reads each aspect of limitation 1h on Renken. For example, Petitioner does not identify what in Renken corresponds to the “network management messages,” what corresponds to the “measured characteristic of the received signal” that “is different than said network management messages,” and what discloses that the “measured characteristic” is the basis for “controlling transmission of the network management messages” from the “receiver” “back to the headend.” b) Conclusion for Claim 1 Accordingly, Petitioner has not shown a reasonable likelihood to prevail in demonstrating that Renken in view of the general knowledge of a POSITA discloses limitations 1a and 1h of claim 1.7 Thus, we do not reach the parties’ contentions concerning other claim limitations or Renken’s priority date.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 9,825,826 - PTAB · Aug 20, 2024 · IPR2024-00442 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–18 and all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (a “POSITA”) at the time of the alleged invention would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems. Additional education may substitute for professional experience and significant work experience may substitute for formal education. Pet. 24 (citing Ex. 1002 ¶¶ 44–46). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for petitioner
“As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The word “means” does not appear in the claims of the ’826 patent. When this is the case, there is a presumption that the claims do not recite means-plus-function limitations under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Since neither party offers any argument or evidence to contravene this presumption, we do not construe any claim term as means-plus-function in rendering our decision.” slip op. at 12
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,825,826 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976 - Global Shade Corporation v. With-U E-Commerce (Shanghai) Co., Ltd.All claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1, 2, 4, 13, and 14 are unpatentable under § 103; proposed substitute claims 15–19 are unpatentable over Rousselle, Tsai, Ohnishi, Hoober, and Seo, so the revised motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts construction is unnecessary and does not propose any term for construction. Pet. 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner does not propose any specific claim construction for any term of the challenged claims. PO Resp. 14. On the full record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“points to any teaching, suggestion, or motivation in either reference” to replace Tsai’s leg locks with Rousselle’s central lock. PO Resp. 44 (citing Pet. 36; Ex. 1002 ¶ 103). Petitioner disagrees, arguing that the Petition cites “voluminous disclosure” from Rousselle identifying the benefits of a central lock. Reply 18 (citing Pet. 35). We agree with Petitioner. The Petition provides several rationales, supported by Dr. Stein’s testimony, for making the alternative modification. Pet. 35–37. For instance, Petitioner argues that one of ordinary skill in the art would have been motivated to make this modification because Rousselle discloses the benefits of a central lock over Tsai’s individual leg locking system, such as making the canopy easier and more convenient for a single user to operate. Id. at 35–36 (citing Ex. 1002 ¶¶ 102–103; Ex. 1003, 3:38–47; Ex. 1005, 4:29–5:5, 8:5–33, Figs. 1, 2, 18, 19). Petitioner also argues that the proposed modification is the simple addition of one known element to another known element to obtain predictable results and uses a known technique to improve a similar device and yield predictable results. Id. at 36–37 (citing Ex. 1002 ¶¶ 105–107; KSR, 550 U.S. at 417). We have reviewed Petitioner’s arguments and evidence and find the reasons to combine persuasive. In sum, we determine that Petitioner’s proposed reasons to combine Rousselle and Tsai in accordance with the alternative modification are realistic, have rational underpinning, and are supported by expert testimony, which we find persuasive and credit. Thus, Petitioner’s evidence shows that a skilled artisan would have had reasons to combine the teachings of in doing so. slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We agree with Petitioner that Tsai’s disclosure of pulling the poles or legs apart to unfold the frame does not disparage central activation to the extent of discouraging one of ordinary skill in the art from investigating or considering Rousselle’s central lock in connection with Tsai’s shelter frame. See DePuy Spine, 567 F.3d at 1327 (holding a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the manually pulling the four poles 1 outwardly.” Ex. 1005, 10:28–29 (emphasis added). As such, Tsai “merely expresses a general preference” for this technique (see DePuy Spine, 567 F.3d at 1327) and does not specifically require it. We agree with Petitioner that Tsai’s general preference for this technique does not teach away from any other method for unfolding the frame. Furthermore, Tsai’s statement that the shelter frame of Figures 16 and 17 is “somewhat difficult to unfold in that an extra person is sometimes needed to push the center strut C upwardly to its completely extended position” (Ex. 1005, 2:19–22) does not disparage all other center lock configurations, in particular the configuration taught by Rousselle. As Petitioner points out, Rousselle discloses that its collapsible shelter/tent with the central lock arrangement can be erected by a single person. Ex. 1003, 13:59–65. So, instead of requiring “an extra person,” the shelter frame of the combination of Tsai and Rousselle could be erected by a single person. Similarly, Tsai’s statement that the shelter frame of Figures 16 and 17 reduces headroom in the tent (Ex. 1005, 2:17–19) does not disparage all other center lock configurations. We agree with Petitioner that the inner units of both Rousselle and Tsai’s Figure 1 embodiment are different than the inner units shown in Figures 16 and 17, which are large scissors-type linkages located well below the canopy’s roof supported by center strut C. See Reply 11. In contrast, Rousselle discloses shelter/tent 10 in which collapsible frame 100 supports sheet-material cover 200. Ex. 1003, 6:30–32; Fig. 1(A). Unlike the shelter frame of Tsai’s Figures 16 and 17, Rousselle’s frame does not include an upwardly extending center strut propping up the sheet-material cover. Instead, sheet-material cover 200 rests directly on frame in which canopy supporting rods 3 (i.e., the “inner units”) form a canopy support for supporting the canopy material. Ex. 1005, 4:11–25, 7:15–20. Accordingly, neither Rousselle’s or Tsai’s frames present the headroom issue that Tsai identifies with respect to the prior art shelter frame of Figures 16 and 17.” slip op. at 27
Patent outcomesUS 10,669,738 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,669,738
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.