• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01481 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), based on its Fintiv analysis, including the earlier district court trial date and weakness in the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “date in the Lenovo Group case as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors discretionary denial of the Petition.” slip op. at 11

  • Skill levelSkill level board ownOther

    “patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces.” Pet. 6. Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications.” Prelim. Resp. 6–7. The differences between the definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any specialized constructions are necessary.” Pet. 6. Patent Owner “does not disagree.” Prelim. Resp. 6. However, Petitioner’s challenge raises an implicit claim construction issue not addressed in the Petition that we discuss in our analysis below.” slip op. at 15

  • BurdenNot reached

    “example, claim 11 recites “receiving a synchronization symbol by a receiver indicating a packet type, each packet type having a different synchronization symbol.” Ex. 1001, 37:53–55. The other independent claims challenged in the Petition are similar in their recitation of a “synchronization symbol.” See id. at 37:9 (claim 1), 38:26–27 (claim 19). Petitioner argues this limitation is disclosed by Auld in view of MPEG-2 Part. 1. Pet. 15–16. Citing Figure 5 of Auld, reproduced in Section IV.C.1, supra, Petitioner asserts that “[t]he ‘sync codes’ in Auld consist of sequences of symbols that are used for synchronization, and therefore qualify as synchronization symbols.” Id. at 17. Patent Owner responds that “what the Petitioners identified as a ‘synchronization symbol’ [in Auld] is in what they have identified as a ‘packet of (or having) symbols.’” Prelim. Resp. 1. In contrast, “[i]n the specification and claims of the ’798 Patent, the claimed ‘synchronization symbol’ is separate from, and precedes, the claimed ‘packet of (or having) symbols.’” Prelim. Resp. 1. In disputing Petitioner’s identification in Auld of a synchronization symbol as claimed, Patent Owner points to Figure 9A of the ’798 patent (reproduced in Section II.C, supra), showing synchronization primitives 901 and 905 as separate from and transmitted before packets 902 and 907, respectively. Id. at 4. Patent Owner also relies on the description of the Figure 9A embodiment in the ’798 patent specification. Id. at 3–5. That description places transmission of the synchronization primitive encoded with the patent type before the control packet in the transmission sequence:” slip op. at 18

  Claim constructionDiscretionary denial
  Patents in suitUS 7,746,798
• HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 16, 2025 · IPR2024-01429 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution on all challenged claims, exercising § 314(a) discretion based on the Fintiv factors, especially the earlier district court trial date and weaknesses in the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 17. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2002; Ex. 2008; Prelim. Resp. 17–18. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 8

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

    “integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75 of the ’307 patent. V. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29

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

    “The parties each raise facially valid points based on the claim language. Petitioner has the burden to show “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104 b(3). Petitioner does not explain how, under its broad construction, the decoder “decodes the encoded data to recover application and control bits in accordance with a line code.” That is, if the encoding does not encode both “application and control bits,” then how can decoding “recover” both under Petitioner’s claim construction? It is not clear on this preliminary record whether the specification supports Petitioner’s broad claim construction. For this reason, Petitioner’s showing based upon the broad claim construction outlined above is not “particularly strong.” See Fintiv at 14–15. As discussed further below, Petitioner also presents a showing under Patent Owner’s more narrow construction. 3.” slip op. at 15

  • Skill levelSkill level board ownOther

    “Prelim. Resp. 6 (citing Ex. 2001 ¶ 15). Relying on its declarant, Dr. Wolfe, Petitioner proposes materially the same level. Pet. 5 (citing Ex. 1003 ¶¶ 26– 29). Based on a review of the record, we adopt the parties’ proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’307 patent.” slip op. at 14

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 7,187,307
• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentable
  PTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7

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

    “On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15

  Patent outcomesUS 11,041,087 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,041,087
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Collision Communications, Inc.Institution denied
  PTAB · Apr 11, 2025 · IPR2025-00285 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because the same claims, grounds, arguments, and evidence had already failed the reasonable-likelihood threshold in the Samsung IPR, and denied joinder.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “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

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “35 U.S.C. § 315(c), which states as follows: JOINDER.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Because joinder under 35 U.S.C. § 315(c) is premised on an inter partes review having been instituted, and the Board did not institute review in the Samsung IPR to which Petitioner seeks to join, we deny the Motion for Joinder.” slip op. at 3

  None
  Patents in suitUS 6,947,505
• Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies Inc.Institution denied
  PTAB · Apr 7, 2025 · IPR2024-01479 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution of IPR on claims 1, 4–5, 8, 11, and 14–16 based on Fintiv balancing, including the earlier district court trial date and weak merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 8. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2007; Prelim. Resp. 8; Reply 3. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot reached

    “First, Iwamoto’s “standby” mode is chosen specifically to avoid malfunction as explained above, and selecting a default mode of operation that bypasses the standby mode would undermine the stated purpose of Iwamoto’s standby mode. See, e.g., Depuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “c) Knight5 Knight describes power source negotiation in a power management system. Ex. 1007 ¶ 4. Knight discloses that if the internal battery or external power source has sufficient power, it can connect with another device as a power source, otherwise, it attempts to connect as a power sink. Id. ¶ 42. The Petition does not explain a reason to combine Knight’s power 5 U.S. Pat. Pub. No. US 2008/0028237 A1, filed July 26, 2006. (Exhibit 1007, “Knight”). or Hsieh. Pet. 60. Grounds based on Knight are unpersuasive for at least this reason.” slip op. at 15

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,232,265
• Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies Inc.Institution denied
  PTAB · Apr 7, 2025 · IPR2024-01478 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution of IPR challenging claims 1, 2, 3, 5, 7, and 9, exercising discretion under § 314(a) based on parallel litigation and the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv Order, at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims.” slip op. at 17

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

    “our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims. III. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 3, 5, 7, and 9 of the ’712 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted” slip op. at 17

  Discretionary denial
  Patents in suitUS 8,680,712
• HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 7, 2025 · IPR2024-01428 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution on claims 1-3, 5, 7-10, 12, 14-17, 20-23, and 26 under its Fintiv analysis, finding the parallel trial date and other factors favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 46. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2001; Prelim. Resp. 46; Reply 5. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-atissue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Finally, Petitioner argues obviousness over each of Banes and Calvignac. These assertions of obviousness rely on testimony on the understanding of a person of ordinary skill in the art of the “spare” code and flags as “out-of-band symbols.” Pet. 20−21. Petitioner also argues that it was “well-known” to include in-band symbols in data packets and to include out-of-band symbols in control indicators to obtain the benefit of allowing data payload information to be readily distinguished from control information. Pet. 63−64. The testimony cited in support relies on the disclosure of Shin ’464 for this statement.5 Ex. 1003 ¶ 225. The exact same disclosure of an 8-bit encoding technique that uses in-band and out-of-band symbols within a transmission is found in another Shin patent that is incorporated by reference in the ’905 patent and has overlapping inventors. Ex. 1006, 9:60−10:8, Ex. 1008, 5:15−28, Ex. 1001, 24:50−55. In other words, the alleged benefit may be better characterized as part of the inventor team’s work rather than a technique “well-known” in the art. And for this reason, Petitioner’s obviousness contentions are less persuasive. 5 U.S. Patent No. 5,974,464, filed September 30, 1996. (Ex. 1006, “Shin ’464”).” slip op. at 15

  § 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 7,154,905
• Whatfix Inc. v. Walkme Ltd.No claims unpatentable
  PTAB · Mar 28, 2025 · IPR2024-00065 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–20 were not shown unpatentable under the Symons and Williams, Allen, or Krishnan and Radhakrishnan obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a “person of ordinary skill in the art (‘POSITA’) in the field of the ’317 patent would have [had a] bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] or automation processes” or “[a]lternatively . . . would have [had] five to six years of experience working on NLP or automation processes.” Pet. 6 (citing Ex. 1003 ¶¶ 43–45). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’317 patent. Dec. 12. is inconsistent with the asserted Symons prior art and with factors (4)–(6) set forth in Daiichi Sankyo. PO Resp. 20–21 (citing Ex. 2002 ¶¶ 36–45). According to Patent Owner, the technology of the ’317 patent was “evolving rapidly” and the level of sophistication in the technology was “relatively low” in November 2017. Id. at 21–22 (citing Ex. 1004, 1–2; Ex. 1009, 2; Ex. 2002 ¶ 42; Ex. 2003 (transcript of June 26, 2024, deposition of Dr. Beigi), 141:2–9, 191:18–197:5; Ex. 2007; Ex. 2008). Further, Patent Owner contends, “[a]ctive work[ers] in the field, like Symons,[8] had less experience than [Dr. Beigi] proposed.” Id. at 22 (citing Ex. 2002; Ex. 2003, 112:12–24). Accordingly, Patent Owner argues, “[t]he evidence of record demonstrates a more appropriate level of skill would [be] a worker who had some education, formal or informal, in computer science and 1–2 years’ work experience with chatbots using NLP and/or automation processes.” Id. (emphasis omitted) (citing Ex. 1003 ¶ 44; Ex. 2002 ¶ 44; Pet. 5–6). “Under Patent Owner’s more appropriate analysis,” Patent Owner contends, “Dr. Beigi’s interpretation of what a POSITA would understand are overstated,” as “[h]e expects a POSITA to have ‘more experience’ (like himself) and apply a more ‘technically correct’ (in his view) understanding of the prior art than less skilled authors and artisans would have understood.” Id. (citing Ex. 2003, 141:2–9, 191:18–197:5). Nonetheless, Patent Owner argues, “[s]hould the Board continue to apply Petitioner’s” slip op. at 12

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). construction” “[f]or purposes of this Petition.” Pet. 6. Patent Owner similarly represents that “[t]he parties agree that the claim terms used in the ’317 Patent claims have their ‘ordinary and custom[ary] meanings of terms’ as would be understood by a POSITA as of November 5, 2017.” PO Resp. 24. After reviewing the parties’ arguments and evidence, we determine that no express claim construction is necessary. See Realtime Data, 912 F.3d at 1375.” slip op. at 15

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1042 ¶¶ 35–37). Further, Petitioner asserts, “the Petition relies on Williams, not Symons, for its teachings of a ‘web-based’ target system.” Id. (citing Pet. 40). Petitioner does not, however, address Patent Owner’s main point, i.e., that the Petition relies on Symons’s illustration of its RPA bot purportedly filling in a text input field in the GUI of the Cronos Email Signature Generator for limitation 1[g] but relies on Symons’s illustration of its RPA bot interacting with a widget in Internet Explorer for limitation 1[h], despite the recitation in limitation 1[h] of “interacting with a widget in the GUI.” See, e.g., PO Resp. 38. Dr. Beigi acknowledges that, “[a]ccording to the ’317 patent, a widget is a GUI element,” and he concludes, with reference to Petitioner’s annotated version of the screenshot from page 13 of Exhibit 1006 reproduced above, that “Symon[s]’s GUI button is a widget in a GUI.” Ex. 1003 ¶ 100 (emphasis added) (citing Ex. 1001, 10:19–21). But neither the Petition, nor the Reply, nor Dr. Beigi’s testimony persuasively explains how a dialog box in Internet Explorer teaches or suggests a widget in the Cronos GUI. The Reply’s contention that “the Petition relies on Williams . . . for its teachings of a ‘web-based’ target system” is unavailing, because the issue is not whether either the Cronos program or Internet Explorer is “web-based”12 but whether Petitioner has identified a teaching or suggestion of an implementation of an automation process that fills in a text input field in a GUI of a web-based target system and interacts with a widget in the same GUI. 12 In this regard, we credit Mr. Zatkovich’s statement that Internet Explorer is local to and resident on the user’s computer. Ex. 2002 ¶¶ 161–162; cf. Ex. 2003, 219:24–220:5 (Dr. Beigi testifying that he is “not sure where this Windows software is running”).” slip op. at 39

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

    “Petitioner’s reasoning fails to explain “how the combination of the two references was supposed to work.” See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). More specifically, Petitioner fails to explain how or why a person of ordinary skill in the art would be motivated to perform Krishnan’s automation process (i.e., fulfilling customer requests) by implementing an “automation process by interacting with a Graphical User Interface (GUI)” and “simulating user input to the GUI,” as purportedly taught by Radhakrishnan. Petitioner’s arguments are focused toward using Radhakrishnan’s RPA bot to perform Krishnan’s customer service requests (i.e., automation process) but fail to explain how Radhakrishnan’s RPA bot’s mirroring of the user’s operations (i.e., the simulation on the displayed user interface) as applied in Krishnan would work or provide sufficient reasoning to do so. See Personal Web, 848 F.3d at 993–994 (“[I]t does not imply a motivation to pick out . . . two references and combine them to arrive at the claimed invention”); In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“[M]ere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole”).” slip op. at 60

  Patent outcomesUS 11,558,317 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,558,317
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. 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).” slip op. at 10

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

    “Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. 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).” slip op. at 12

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

    “Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13

  • BurdenNot shown unpatentable

    “We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071

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.