- PTAB · Feb 27, 2025 · IPR2024-01382 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of success based on Fukui’s teachings.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems. Pet. 24 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art, or offer its own assessment. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’423 patent and the asserted prior art, and we apply it in our patentability evaluations below. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In this proceeding, Patent Owner does not dispute any of Petitioner’s contentions as to claim construction or offer any construction of its own for any term. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is inconsistent with the plain language of the claims. We also question whether that construction adds clarity in seemingly substituting “width that accommodates” for “width,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this time, we find persuasive Petitioner’s position that Fukui’s teachings account for the pertinent “width” requirements of each of claims 1, 9, and 17. See, e.g., Pet. 30, 32–46. On this record, Dr. Ralph provides sufficient testimony that under either of the parties’ proposed constructions of the limitations involving cassette widths, Fukui’s teachings account for those limitations. See, e.g., Ex. 1003 ¶¶ 71–98.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Owner’s challenge to Petitioner’s Fukui-based grounds is whether, in Fukui, a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette.11 We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 11 There is no dispute on this record that the term “module” as used in Fukui is analogous to the term “cassette” as used in the ’423 patent. 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,740,423 - PTAB · Feb 27, 2025 · IPR2024-01227 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all grounds for claims 1–5 and 8–13, finding a reasonable likelihood that claim 8 is anticipated by Fukui and claims 1 and 8 are obvious over Fukui-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner contends that we should deny institution under 35 U.S.C. § 325(d) “because the Petition presents ‘the same or substantially the same prior art or arguments previously . . . presented to the Office.’” Prelim. Resp. 25–31 (alteration in original). Specifically, Patent Owner explains, the Office previously considered Sedor during the ’542 patent’s prosecution, and Sauter was made of record but not considered during prosecution. Id. Patent Owner, however, states that it “recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 25 n.3. Because, as set forth below, we do not, on the present record, find any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and we need not consider it further.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have [had] a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–31. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’542 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“enough to resolve . . . the lead Fukui ground” but that “[t]here are two disputes relevant to the alternative Sauter ground.” Pet. 22. With respect to the first of these “disputes,” Petitioner presents two claim constructions for the claim term or phrase “cassette width as measured between outer side edges thereof of one of one, two, three, four and six standard width units.” Id. at 23. The constructions are said to be from “the co-pending litigation,” with one characterized as “Patent Owner’s proposed construction”6 and the other as “CommScope’s proposed construction.”7 Of note is Petitioner’s 6 The claim construction attributed to Patent Owner is: “cassette width as measured between the outer side edges thereof that accommodates one of one, two, three, four, or six receptable modules.” Pet. 23. 7 Petitioner’s construction is: “The cassette width as measured between the outer side edges thereof equals one, two, three, four, or six times the contention that “[Patent Owner]’s construction cannot be correct,” and accompanying explanation in that respect. Id. at 22–23, 24. Patent Owner acknowledges that there is a dispute between the parties as to the noted claim construction but urges that “[t]he Board, however, need not fully resolve this claim construction dispute,” as, in Patent Owner’s view, the grounds based on Sauter are deficient based on either construction. Prelim. Resp. 21–22. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute, nor does it necessitate that we adopt any particular construction for the pertinent claim term. 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))). We invite the parties to develop the record more fully on this claim- construction issue during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,435,542 - PTAB · Feb 27, 2025 · IPR2024-01218 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR of claims 1–5 and 8–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Stated somewhat generally, the core question underlying Patent Owner’s challenge to Petitioner’s Fukui-based grounds is whether a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette. We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and 10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) and forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body. At this time, we regard such characterization of the coupled unit modules 10A and 10B as reasonably giving rise to an understanding that the resulting conversion module 20 constitutes a unitary module or cassette component.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. REQUEST FOR DENIAL UNDER 35 U.S.C. § 325 Patent Owner contends that the Board should exercise its discretion to deny under 35 U.S.C. § 325(d) on the theory that the Petitioner relies on substantially the same prior art and arguments that were previously considered by the Office. See Prelim. Resp. 31–37. Patent Owner, however, states the following: “Patent Owner recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 31, n.4. Because, as set forth above, we do not agree at this time as to any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and need not consider it further.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 9 The claim construction attributed to Patent Owner is: “cassette width that accommodates one of one, two, three, four, or six receptable modules.” Pet. 21. 10 Petitioner’s construction is: “The cassette width equals one, two, three, four, or six times the standard width unit, without an additional amount. This means the cassette width must be evenly divisible by the standard width unit.” Pet. 21.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,795,107 - Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution deniedPTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution
The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,098,756 - PTAB · Jan 28, 2025 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims and all four grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We begin our analysis with independent claim 1. Considering these factors, we preliminarily determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable as obvious over Zhang, Fillebrown, and Pasanen, for the reasons explained below.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that limitation 1c is taught by the combination of Zhang with Fillebrown. Pet. 18. Petitioner identifies Zhang’s teaching of transmitting commands and media content from the mobile device to helper servers via a wireless network, WLAN. Pet. 16–18 (citing Ex. 1004, 3:25– 60, 4:1–8, 4:32–50, 7:1–14, 8:13–22; Ex. 1003 ¶¶ 103, 104, 114–118). Acknowledging that Zhang does not expressly teach an intermediate routing device, Petitioner identifies Fillebrown’s intermediate wireless router (wireless router 120) for providing network range extension by amplifying routed signals. Id. at 19–22 (citing Ex. 1005 ¶¶ 16, 34, 49, 51, 57, 61). Petitioner contends a POSITA would have been motivated to modify Zhang to route data via an intermediate wireless router pursuant to Fillebrown to provide network range extension, and that such a modification would have had a reasonable expectation of success because Zhang and Fillebrown teach the same network setup (i.e., WLAN using a wireless protocol/standard such as IEEE 802.11 or Home RF). Pet. 22–23 (citing Ex. 1003 ¶¶ 109–111)” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 4; see generally Prelim Resp. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We preliminarily disagree with Patent Owner. Although the claim lists step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Nothing in the express claim language precludes performing step 1d before step 1b, as in Zhang. For example, the claim does not contain temporal terms, like “then” or “next,” nor does the claim otherwise specify that step 1b must precede step 1d. Although Patent Owner points out that a term of step 1d (i.e., the one more available devices) derives antecedent basis from text in step 1b (i.e., one more available devices), this alone does not directly or implicitly require performing step 1b before step 1d. Prelim Resp. 6–7 (citing Ex. 1002, 240, ’648 patent prosecution history). Nor does the Specification require performing the step of identifying devices as available before the step of wirelessly signaling those devices or even that the steps be mutually exclusive. For example, there are no statements that this step order is important, nor disclaimer of any other order, nor any prosecution history indicating a surrender of any other order. Moreover, according to the Specification, announcer 30, which is the component that identifies devices as available prior to the wirelessly signaling, is only “preferably provided.” Ex. 1001, 7:28–31. Even assuming Patent Owner were correct that step 1b must precede step 1d, Patent Owner’s position that device(s) must be identified as available does not appear to be commensurate with the claims. According to its plain meaning, limitation 1b does not appear to require identifying devices as available; the claim merely requires identifying “available devices.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In other words, the claim does not appear to require identifying (i.e., determining) whether devices are available but merely requires identifying devices that happen to be available. According to our preliminary understanding, Zhang’s mobile device 1) discovers (identifies) connected available and unavailable helper servers, and then 2) sends (wirelessly signals) service requests to compatible available and unavailable helper servers. Ex. 1004, 3:44–4:8, 6:51–7:13. Thus, Zhang identifies and then wirelessly signals available devices (Zhang also identifies and then wirelessly signals unavailable devices). As such, we preliminary determine that Zhang meets the claim language “identifying one or more available devices” and “wirelessly signaling the one or more available devices.”” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,547,648 - Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstitution deniedPTAB · Jan 28, 2025 · IPR2024-01047 · APJ Stacey G White · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
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 the petition “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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Patent Owner’s definition of a person of ordinary skill in the art is similar to Petitioner’s definition with some variation in the amount of education and specificity as to the experience required. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. We note, however, that our determination in this proceeding would be the same under either formulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a [person of ordinary skill in the art]” and does not propose construction of any claim term. Pet. 4. Patent Owner also does not propose construction of any claim term. See generally, Prelim. Resp. Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“feature of scanning a wireless communication network by the mobile device receiving the streaming data for re-routing, to identify devices connected to the wireless network, are identified as capable to handle the routed media content.” Prelim. Resp. 5–6 (emphasis added) (citing Ex. 1002, 237–238). Thus, we understand the recited language to require scanning to find devices that have been identified as compatible, not just scanning to find devices and later determining which of those devices, if any, are compatible. Zhang, on the other hand, scans to find devices in the network, but that scan does not seek out devices identified as compatible. Specifically, Zhang scans to find its “helper environment” which is composed of “devices around them.” Ex. 1004, code (57); see also id. 2:16–20. The first step of Zhang’s process is to find “a local device [that] offers helper service.” Id. at 3:62–63. In the next step, Zhang then interrogates the device it scanned for in order to find out whether that device offers the necessary service. Id. at 3:63–4:5. In other words, Zhang is not scanning for compatible devices, but rather it is scanning for any device around it and then asking whether the device provides the necessary service. We find this to be insufficient because the claim is not merely seeking to identify a compatible device, but rather it is scanning “to identify a plurality of devices, identified as compatible to handle said media content.” Thus, for these claims it is not enough that the network be scanned for devices; instead, the network must be scanned for devices “identified as compatible.” The inclusion of Rofheart does not address this issue. Rofheart is relied upon to teach “that a local device identifies and connects with a plurality of remote devices.” Pet. 29. According to Petitioner, one of ordinary skill in the art would have used Rofheart’s teaching to improve Zhang by adding “the benefit of providing users control to select one or more of a plurality of devices, rather than always connecting to the first identified available compatible device, as taught by Zhang.” Id. As such, neither of the cited references addresses the recited scanning for devices identified as compatible.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,699,223 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 48. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 20–21. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly 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 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868 - PTAB · Jan 27, 2025 · IPR2024-01121 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution under Fintiv, finding that the parallel district court proceedings would likely address patentability before a final written decision and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In Fintiv, the Board explained that “cases addressing earlier trial dates as a basis for denial under NHK Spring have sought to balance considerations such as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5. Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors consider the following: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Claim Construction In interpreting the claims of the ’402 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties each contend that resolution of this proceeding does not require that the meaning of any claim term be made explicit. See Pet. 15; Prelim. Resp. 8. We agree. 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 18
- Skill levelSkill level petitioner adoptedOther
“1. Level of Ordinary Skill As part of our compelling-merits analysis, we consider the level of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). Petitioner proposes the following: [A] person of ordinary skill in the art at the time of the alleged invention of the ’402 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 73. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 21–22. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 17
- BurdenNot reached
“outset, we note that the language of claims 1 and 12 is clear in reciting the presence of two distinct signals, i.e., a control signal and a reference signal, and that it is the control signal that “triggers” transmission of the reference signal. See Ex. 1001, 14:5–6, 60–62. Patent Owner credibly argues that the “two-step embodiment” of Figure 10 of the ’402 patent, and in particular steps 1005 and 1010, describe the control and reference signal transmissions that are encompassed by claims 1 and 12. See Prelim. Resp 8–10. Patent Owner also credibly argues that the Figure 10 embodiment is distinct from other disclosed embodiments, including the “single-step embodiment” of Figure 8. See id. at 10–11. Patent Owner further explains reasonably that the content of column 6 of the ’402 patent on which Petitioner relies has a more “natural reading” in distinguishing between separate transmission of a “control signal” that “triggers” separate transmission of a “reference signal” as described in connection with Figure 10 as juxtaposed with transmission of a “control channel,” which is distinct from a control signal, and a “reference signal” that may constitute a single transmission, as is described in conjunction with Figure 8. See id. at 16–17. It logically follows that if, as Patent Owner credibly argues, the claims of the ’402 patent do encompass the latter transmission scheme, rather than the former, then Petitioner’s reliance on Moon, as presented in its Petition, is insufficient to account for those claims. On this record, we need not decide whether Petitioner would likely prevail on the above-noted issues as Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. Because, as noted above, Patent Owner has identified potentially dispositive gaps or flaws in Petitioner’s apprehension as to what is adequate in Moon’s disclosure to account for the claims of the ’402 patent, Petitioner’s proposed grounds cannot be said to rise to the level of a “compelling” meritorious challenge.” slip op. at 22
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,148,402 - Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution deniedPTAB · Jan 27, 2025 · IPR2024-01050 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–3, 9, and 24 would have been obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Considering the above principles, we determine that Petitioner has not shown a reasonable likelihood that any of the challenged claims would have been obvious over Chihara, BluetoothSpec, Everett, and Chang, for the reasons explained below.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent owner contends that a person of ordinary skill “would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a related field in computing technology, and at least two years’ experience in wireless communication and mobile devices including multimedia streaming, or equivalent education, research, experience, and knowledge.” Prelim. Resp. 2–3. In other words, Patent Owner argues that the person of ordinary skill would have had less education and more specific experience with mobile devices, including multimedia streaming, than Petitioner proposes. Because Petitioner’s argument is supported by declaratory testimony, and Patent Owner does not provide supporting evidence for its argument, we adopt Petitioner’s articulation of the level of ordinary skill in the art. See Ex. 1003, ¶ 29 (citing Ex. 1001, 1:16–20, 4:18–55, 11:61–12:11).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “mobile communication device is receiving rerouted data from surrounding equipment, rather than rerouting data to surrounding equipment.” Pet. 19. This is in accord with the specification of the ’990 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1001, 7:15–17 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no evidence to justify such a 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. 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))). departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’990 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 1, which requires the streaming device (phone 11B) to indicate its availability to receive rerouted data from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,969,990 - Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution deniedPTAB · Jan 27, 2025 · IPR2024-01049 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 22–24 would have been obvious over Chihara, BluetoothSpec, Everett, and Chang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review. CONCLUSION For the reasons above, Petitioner has not shown that there is a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’866 patent is unpatentable. Therefore, we deny the Petition. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “streaming device is receiving rerouted data from surrounding media handling devices, rather than rerouting data to surrounding media handling devices.” Pet. 19–20. This is in accord with the specification of the ’866 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1038, 7:22– 24 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. 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))). evidence to justify such a departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’866 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives streaming or media data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted streaming data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 22, which requires the streaming device (phone 11B) to indicate its availability to receive streaming data rerouted from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,866
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.