- 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 - 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 - 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 - PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - PTAB · Aug 6, 2024 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kovvali and Kalman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“on May 8, 2024 (see 35 U.S.C. § 314(b)(1)), and none of the relevant deadlines for fact discovery or expert discovery, or the date of the scheduled Markman hearing, will have passed by that date. As described by Petitioner, fact and expert discovery do not close until next year, the parties have not yet exchanged preliminary claim constructions, and the Markman hearing is not scheduled until December 4, 2024, approximately four months after our deadline for this decision. See Pet. 83. We also find that Petitioner’s diligence in filing the Petition only about a month after receiving Patent Owner’s infringement contentions, and only four months after the filing of the original complaint, supports this factor weighing more strongly against exercising our discretion to deny the Petition. See id. at 82. Accordingly, in view of the parties’ respective arguments, we find that factor 3 weighs strongly against discretionary denial. 4. Overlapping Issues with the Parallel Proceeding Under this factor, Petitioner stipulates that “[i]f the Board institutes trial, Petitioner will cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims, to the extent Petitioner even asserts the same combination in the district court.” Pet. 83. We find that this stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns for potentially conflicting decisions.” Sand at 12. More specifically, if we institute, then by stipulation the court in the Cisco litigation will not have to determine whether the challenged claims of the ’279 patent would have been obvious in view of Kovvali, Kalman, Masters, and RFC 2892, and therefore the risk of inconsistent results is also reduced. against discretionary denial because the stipulation is limited in nature.10 Prelim. Resp. 20. We agree, and therefore find this factor weighs slightly against discretionary denial. Sand at 12 n.5 (“Petitioner stipulates only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition in this case. . . . Petitioner could have stipulated that it would not pursue any grounds raised or that could have reasonable been raised in an IPR . . . . Doing so might have tipped this factor more conclusively in its favor.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision below, Petitioner relies on Kovvali alone as teaching all but two steps recited in independent claim 1, and Petitioner similarly relies on Kovvali alone as teaching all but two limitations of independent claim 15. See Pet. 26–50, 63–64. For those additional steps and limitations, Petitioner relies on combined teachings of Kovvali and Kalman. See id. at 42–47. As Petitioner points out and Patent Owner acknowledges, however, Kovvali was not previously presented to the Office during prosecution of the application for the ’279 patent. See id. at 80; Prelim. Resp. 26. Moreover, notwithstanding Patent Owner’s assertion that Drake has “similar[ities] to how Petitioner characterizes Kovvali,” Patent Owner identifies only that “Drake teaches a ‘management system for local area networks’ that features an ‘allocator,’ which determined ‘if requested facilities are available, and if so, reserves these facilities for the requesting station.’” Prelim. Resp. 26 (citing Ex. 2003, code (57)). In contrast, Petitioner’s reliance on Kovvali goes significantly beyond such high-level generalizations, providing a detailed mapping of Kovvali’s teachings to, for limitations [15.1]–[15.5] and [15.8] of independent claim 15, as well as to the additional limitations recited in each of dependent claims 2, 5, 11–14, and 18, with supporting testimony from Dr. Mir’s declaration. Pet. 27–42, 48–51, 55–56, 59–64, 67 (citing Ex. 1003 ¶¶ 62–103, 120–130, 146–150, 160–185). Notably, Patent Owner does not expressly contest Petitioner’s arguments with respect to those limitations at this stage of the proceeding. See generally Prelim. Resp. Nor does Patent Owner cite any evidence of arguments substantially the same as those presented by Petitioner having been presented during prosecution. Accordingly, on this record and after taking into account Becton, Dickinson factors (a), (b), and (d), cited by Advanced Bionics as relevant to the first part of the two-part framework set forth therein (see Advanced Bionics at 9–10), we are not persuaded that the same or substantially the same art previously was presented to the Office or that the same or substantially the same arguments previously were presented to the Office. Accordingly, we need not proceed to the second part of the framework, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of the Preliminary Response. Prelim. Resp. 3. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,035,279 - PTAB · Jul 26, 2024 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all asserted grounds, finding a reasonable likelihood that the Amit, Jacobsen, and Isaksson combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA [(person of ordinary skill in the art)] would have a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Additional education could substitute for professional experience, or vice versa..” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“and Jacobsen. Prelim. Rep. 36–41. Specifically, Patent Owner argues that Amit already identified and solved the reflection problem so there would be no need to make an additional modification to Amit. Id. at 36–37 (citing Ex. 1014, 19:65–20:43). This argument does not negate, however, Petitioner’s contention that a POSITA would have recognized that Jacobsen’s multicarrier modulation would improve upon Amit’s single-carrier modulation by mitigating distortion on the cable network, adapting to channel degradation, and providing increased computational efficiency. Pet. 49–50 (citing Ex. 1016, 312; Ex. 1004 ¶ 173); see KSR, 550 U.S. at 422 (motivation to combine established when POSITA would have appreciated the benefits achieved by the combination).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,295,518 - PTAB · Jul 26, 2024 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 ’249 patent on all challenges in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“deny institution under § 314(a) based on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–19 (§ II.B.4.i) (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Pet. 88–89; Prelim. Resp. 59–60. General Plastic addresses “[m]ultiple, staggered petitions challenging the same patent and same claims rais[ing] the potential for abuse.” General Plastic, Paper 19 at 17 (emphasis added). 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.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of 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) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and 2–3 years of experience in design or development of signal processing and communication systems or networks. . . . Additional education could substitute for professional experience, or vice-versa. Pet. 6 (citing Ex. 1002 ¶¶ 17–18). At this stage of the proceeding, 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 purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,594,249
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.