• Lifescan Global Corporation v. PHC Holdings CorporationInstitution denied
  PTAB · Nov 18, 2019 · IPR2019-01127 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2018). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we deny the Petition, and do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “We agree with Patent Owner that the Petition lacks requisite clarity and does not satisfy Petitioner’s burden of identifying “how the construed claim is unpatentable under the statutory ground on which petitioner challenges the claims, . . . [by] specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also 37 C.F.R. § 42.22(a)(2) (requiring “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.”). According to our Trial Practice Guide, “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Here, Petitioner dedicates two pages to its discussion of how the challenged claims would have been obvious over the combined teachings of eight references. Pet. 68–69. Petitioner does not detail how each of the eight references are to be combined or which teachings from each reference are relied upon to suggest each limitation of the claims.13 Furthermore, neither Petitioner nor Petitioner’s declarants provide a reason that the skilled” slip op. at 29

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Figure 3 of Heller, however, does not show an “assembled sensor.” Instead, it provides an exploded view of a sensor, and does not show spacer 28 actually covering sensing layer 32. Thus, Petitioner and its declarants do not even rely on the actual figure in Heller, but instead rely on an imaginary adaptation (an unexploded version) of the figure. Furthermore, Dr. Smith and Mr. McGarraugh offer little more than a conclusory sentence that spacer 28 covers part of sensing layer 32. See Ex. 1008 ¶ 30; Ex. 1009 ¶ 29. Neither declarant offers any evidence to support the conclusion that spacer 28 in Heller actually covers sensing layer 32. Although Dr. Smith discusses possible benefits of having a spacer that covers part of a reagent layer, he directs us to no evidence sufficient to determine that spacer 28 in Heller actually does cover the reagent layer. Ex. 1008 ¶ 30. Such unsupported conclusions are entitled to little weight. 37 C.F.R. § 42.65(a). In sum, Petitioner does not show that Figures 1 and 3 disclose the “spacer layer” of claim 1 with anticipatory specificity.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2018). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Petitioner proposes constructions for four terms, “vertical,” “wettability index,” “air hole,” and “correcting unit.” Pet. 19–20. Patent Owner argues that the Board does not need to construe any claim terms at this time. Prelim. Resp. 5. After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,480,878
• DISH Network L.L.C. v. Multimedia Content Management LLCInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01015 · APJ Matthew J Mcneill · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, Preliminary Response, Reply, and Sur-reply, as well as the parties’ supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent. We, therefore, do not institute an inter partes review of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “implemented within the bidirectional communication paradigm, but Petitioner has not sufficiently explained why an ordinarily skilled artisan would have been motivated to use both the prior art access control using bidirectional communication and the improved access control using unidirectional communication at the same time. Hoang ’980 teaches “the present invention teaches methods and systems for communicating a client’s DOD account status to a client using uni-directional communications.” Ex. 1008 ¶ 49. Thus, unidirectional communications are used to send a client’s on-demand account status from a server to a client. Hoang ’980’s teaching that “all aspects of the present invention can be implemented within the bi-directional communication paradigm” indicates that a server within a system with bidirectional communication capabilities could transmit a client’s on-demand status to a client. However, Petitioner’s inference that this system would then also utilize account control using the resource-intensive bidirectional communications is speculative and not sufficiently supported by the evidence of record. Moreover, Petitioner’s proposed combination would use both unidirectional access control and bidirectional access control for the same data request. Petitioner argues the benefits of on-demand video would have motivated an ordinarily skilled artisan to implement access control using both unidirectional and bidirectional communications (Pet. 18‒20). Mr. Wechselberger’s testimony that user-initiated video-on-demand programming was a beneficial feature that cannot be used in a unidirectional system explains why an ordinarily skilled artisan may have been motivated to use bidirectional communications to control access to on-demand video content. Ex. 1006 ¶¶ 109‒110. But Petitioner has failed to establish why an ordinarily skilled artisan would have used both access control paradigms for the same data request. More specifically, with respect to the proposed combination, Petitioner does not explain persuasively why an ordinarily skilled artisan would have continued to use unidirectional communications to provide access control for a data request when using bidirectional communications already provides access control for the same data request. For these reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 7. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 7. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art, which Patent Owner asserted in a prior petition. Prelim. Resp. 2. Patent Owner asserts that for the purposes of determining whether to institute the Petition, the differences between its previously-proposed definition and Petitioner’s proposed definition are not dispositive. Id. at 2‒3. We are satisfied that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’468 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for the following terms: “to generate[ing . . .] controller instructions” (Pet. 8‒9); “a controller node” (Pet. 9‒10); “a service provider network” (Pet. 10‒12); “selectively transmit[ting, by the plurality of gateway units,] the content requests to the service provider network in accordance with the controller instructions” (Pet. 13); and “gateway units” (Pet. 13‒14). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒5. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,799,468
• DISH Network L.L.C. v. Multimedia Content Management LLCInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01014 · APJ Matthew J Mcneill · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “2. Independent Claim 1 A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority date of the ’925 patent is before the effective date of the applicable AIA amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply. determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze Petitioner’s obviousness grounds with the principles identified above in mind.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “motivated to combine the prior art method of controlling access to programming using bidirectional communications with the improved method of controlling access to programming using only unidirectional communications because Hoang ’980 teaches “those skilled in the art will recognize that all aspects of the present invention can be implemented within the bi-directional communication paradigm, the only difference being that even more features can be provided to the digital broadcast and DOD user when a bi-directional communication link is available.” Ex. 1008 ¶ 49.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 8. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 8. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art,” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “transmit[ting, by the plurality of network elements, the] content requests to the service provider network in accordance with the controller instructions” (Pet. 17); “network elements” (Pet. 18); and “pay-per-view advertising” (Pet. 18‒19). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒6. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,465,925
• Pfenex Inc. v. Glaxosmithkline Biologicals SAInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01027 · APJ Richard J Smith · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21, exercising § 314(a) discretion because the concurrent petition did not justify its added burden.

  RulingsInstitution decision

  • Parallel petitionsDenied

    “challenge the same claims of the same patent, i.e., the ’345 patent. See Paper 2; Pfenex, IPR2019-01028, Paper 2. Moreover, we do not find the asserted differences between the ’028 Petition and ’027 Petition, as explained by Petitioner, to be sufficiently material to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both the ’027 Petition and the ’028 Petition. See TPG July 2019 Update, 26 (“Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.”). The ’028 Petition advances two obviousness challenges that rely on art regarding CRM197 and art regarding “a vector that directs the export of the mutant proteins into the periplasmic space.” Paper 10, 4. Although the ’027 Petition advances an anticipatory challenge based on Mekada, Petitioner relies on Mekada for its teachings of CRM197, similar to its reliance on Davis and Zhou in the ’028 Petition. Id. As for the signal peptide “capable of directing transport of said bacterial toxin polypeptide to the bacterial periplasm,” Petitioner points to the disclosure of expression vector pET-22b in Mekada to argue that “the periplasmic secretion function of pET-22b is an inherent property, regardless of whether this function is discussed in Mekada.” Pet. 26–27. Petitioner characterizes its two obviousness challenges in the ’027 Petition as relying on Mekada and art “which present[s] vector maps that encode a signal peptide for potential periplasmic location,” similar to Petitioner’s reliance on Inouye and Ikemura for “a vector that directs the export of the mutant proteins into the periplasmic space” in the ’028 Petition. Paper 10, 4. We thus agree with Patent Owner that “the redundancy of Petitioner’s references and the similar manner in which Petitioner relies on them is evident from Petitioner’s own characterization of their teachings.” Paper 11, 2. Although Petitioner describes some differences between the ’028 Petition and ’027 Petition, it fails to persuasively explain “why the issues addressed by the differences are material.” TPG July 2019 Update, 27. We are not persuaded on this record that merely arguing that different art is cited, or that the ’027 Petition includes an anticipation challenge, explains “why the issues addressed by the differences are material.” See id.; Paper 10, 4.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “Accordingly, we institute an inter partes review on all grounds presented in the ’028 Petition (see IPR2019-01028), and exercise the Director’s discretion under 35 U.S.C. § 314(a) to deny institution of the present Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21 of the ’345 patent is denied and no inter partes review is instituted.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,422,345
• Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc.All claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00974 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 1–14 are unpatentable: Robertson anticipates claims 1–3 and 5, and Fimiani combined with Robertson or Angeli renders claims 1–14 obvious; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art, and thus begin with the level of ordinary skill in the art. The ordinarily skilled artisan is a “legal construct” that “presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “1. The preamble of claim 1 The preamble of claim 1 recites “[a] method for treating a patient diagnosed with ascites due to liver cirrhosis.” Ex. 1001, 8:25–26.6 5 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018 to require a federal district court claim construction approach) (now codified at 37 C.F.R. § 42.100(b) (2019)). 6 Before institution, Petitioner argued that the preamble is not limiting. See Pet. 11–12 (contending that the “preamble of claim 1 is merely a” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Claim 1 We find that Robertson teaches explicitly each and every limitation of claim 1. As to the preamble, we agree with Petitioner that Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as interpreted above. Supra § III.C.1. Robertson teaches administering terlipressin to a patient having “Child-Pugh C cirrhosis due to previous alcohol consumption complicated by recurrent encephalopathy, diuretic-resistant ascites, and hepatocellular carcinoma.” Ex. 1004, 2125. We credit and rely on Dr. Gow’s unrebutted testimony that “Child-Pugh C cirrhosis is a form of liver cirrhosis” and, therefore, an ordinarily skilled artisan would understand that the 59-year-old man’s ascites was due to liver cirrhosis. Ex. 1002 ¶ 75. We also note that Patent Owner admits that Robertson’s patient was diagnosed with ascites due to cirrhosis and that “terlipressin was used to treat the patient’s HRS.” See PO Resp. 34 (citing Ex. 1004, 2125). Robertson also discloses that the patient’s serum creatinine concentration was reduced, thus indicating an improvement in renal function. Ex. 1004, 2125–2126; see also Ex. 1001, 1:60–67, 3:40–46, 7:20–40 (all identifying “a reduction in serum creatinine concentration” as an indicator for improved renal function). Accordingly, Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as claimed.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “4. Conclusion as to obviousness over Fimiani and Robertson or Angeli In sum, we find that the combination of Fimiani and Robertson or Angeli teaches or suggests each and every element of claims 1–14. We find that an ordinarily skilled artisan would have been motivated to combine Fimiani with Robertson or Angeli, and would have had a reasonable expectation of success in achieving the claimed invention. We also find that Patent Owner has failed to persuasively show secondary considerations of non-obviousness. Thus, after carefully considering the arguments and evidence, we determine that the record as a whole weighs in favor of a conclusion of obviousness, especially given the disclosures of the art of record in this case and strength of the obviousness case based on the first three Graham factors.” slip op. at 58

  Patent outcomesUS 9,655,945 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,655,945
• Zscaler, Inc. v. Symantec CorporationAll claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12

  • BurdenFwd all claims unpatentableUnpatentable

    “For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7

  Patent outcomesUS 9,525,696 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,525,696
• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Nov 12, 2019 · IPR2018-01018 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Reudink and Antonio; the motion to amend with substitute claim 18 is denied for lack of written-description support and obviousness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends: [A] POSITA[5] would have had Bachelor of Science in Electrical Engineering, or an equivalent field, as well as three to four years of experience in the field of wireless communications; or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in the field of wireless communications. Pet. 30 (citing Ex. 1006 (Negus Decl.) ¶ 29). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art, although someone with less education but more experience, or more education but less experience could also have met this standard.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). At oral argument in IPR2018-01017, the attorney for the Patent Owner confirmed that there was no dispute with regard to the level of skill in the art. Ex. 3002, 34:22–24. We determine that the aforementioned argument is applicable to this proceeding because the ’728 patent is related to the patent challenged in IPR2018-01017 (see supra § I.A). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “proposed amendment “an access point compliant with IEEE 802.11 standards.” In the Motion to Amend, Patent Owner cites column 4, lines 38 through 44, of the ’728 patent in support of this amendment. See Mot. to Amd. 7.11 The cited passage in the ’728 patent states: “the examples presented herein are directed towards wireless IEE[E] 802.11 type network configurations, wherein the client device is capable of roaming within the coverage area of the smart antenna and the client device is configured to establish an association with an access point over a main beam.” Ex. 1001, 4:38–44 (emphasis added). This passage relates to the capability and configuration of the client device not the access point. See Ex. 2006 (Short Decl.) ¶ 40 (citing this same passage in support of the statement that “a [POSITA] would understand that the receiving device can be 802.11 compatible.”) (emphases added). 11 In this section of the Motion to Amend, Patent Owner does not even clearly assert that the Specification of the ’728 patent provides written description support for this amendment. See Mot. to Amd. 7 (“[T]he access point may be compliant with 802.11 standards.”) (emphasis added). The declaration of Patent Owner’s technical witness, Dr. Short, filed in support of the motion to amend provides nothing more than a verbatim recitation of this sentence and a citation to same passage in the ’728 patent with no reasoning or explanation. See Ex. 2006 ¶ 36. As the cited passage does not support his statement, we give no weight to this portion of Dr. Short’s declaration. See 37 C.F.R. § 42.65(a). And, we find that Patent Owner’s ambiguous assertion lacks evidentiary support.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. Pet. 24–27 (citing Ex. 1006 (Negus Decl.) ¶ 451). The Petition states: A POSITA at the time of Reudink and Antonio would have been motivated to combine the teachings of Reudink and Antonio. Reudink sends a direction message to remote stations indicating if a beam is acceptable for communication and, if not, that the remote station should search for another beam. Acquiring a beam can thus take some time and may be a problem in cases where beam acquisition is time critical, such as for a mobile remote station. Modifying the direction message of Reudink to include the “add beam set” and “drop beam set” from Antonio’s HDM would speed up beam handoffs for mobile users in the Reudink wireless system and also reduce signaling load on the network. Ex. 1006 ¶ 451. Making this combination is within the ordinary creativity and routine skill of a POSITA because Reudink and Antonio are both directed to problems associated with determining and communicating the preferred beams to be used to establish communications between a remote station and a base station in a wireless multi-beam communication system. Ex. 1006 ¶ 439. Both Reudink and Antonio consider multi-beam communication systems applicable to wireless communications, with both fixed and mobile remote stations. Ex. 1006 ¶ 440. Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio. Conclusion regarding Unpatentability of Claim 16 After consideration of the arguments and evidence presented by the parties, we find that a preponderance of the evidence establishes Reudink and Antonio teach all the limitations of claim 16 and that Petitioner has established there was a motivation to combine the relevant teachings of Reudink and Antonio. We conclude that claim 16 would have been obvious in light of Reudink and Antonio.” slip op. at 33

  Patent outcomesUS 7,729,728 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 5 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 18–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377
• Instrumentation Laboratory Company v. Hemosonics LLCRehearing denied
  PTAB · Nov 8, 2019 · PGR2019-00033 · APJ Jeffrey W Abraham · PGR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1, 4, 26, 36, 51, 52, and 55 because Petitioner did not show error in the written-description analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2

  • BurdenDecided for patent owner

    “As we stated in our Decision, Petitioner had the burden of proving that at least one of these claims failed to satisfy the written description requirement of 35 U.S.C. § 112(a). Dec. 8. The only argument and evidence Petitioner presents, other than the lack of an express disclosure of a thermal conductivity value, is Dr. LaDuca’s statement that thermal conductivity of a plastic can vary widely. As we noted in the Decision, however, Dr. LaDuca also states that “[t]here are many polymers that may meet the open-ended range of thermal conductivity which may be suitable or unsuitable for molding (e.g., depending on the selected interrogation means).” Ex. 1002 ¶ 90. Given the broad range disclosed in the claims—a thermal conductivity exceeding 0.123 W/m °K—we determined that Dr. LaDuca’s statement that thermal conductivity values can vary widely, along with the statement that many polymers may meet the claimed range of thermal conductivity, did not provide adequate support for Petitioner’s assertion that there is no written description support for claims 4, 36, and 55 in the ’039 patent specification. As such, we did not misapprehend Petitioner’s evidence. Rather, in view of the lack of sufficient evidence from Petitioner, we determined that Petitioner failed to show sufficiently that claims 4, 36, and 55 lack written description support in the ’039 patent.” slip op. at 5

  • Strike new argumentNew argument disregardedDenied

    “arguments addressing the thermal conductivity of Styron 666. Req. Reh’g 7–9. The rule governing a rehearing request permits “[a] party dissatisfied with a decision . . . [to] file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d) (emphasis added). This rule does not address explicitly whether the requesting party also may file new evidence with its rehearing request. The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”), however, is instructive on this matter. When discussing general procedures applicable to rehearing requests, the Practice Guide states that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” Id. at 48,768 (emphasis added). A party may argue good cause exists in the rehearing request itself.” slip op. at 6

  None
  Patents in suitUS 9,977,039

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.