- PTAB · Apr 25, 2024 · IPR2023-01267 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Wager and TS25.321.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)11 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. LG has submitted such a stipulation. Prelim. Reply 1; Ex. 1300. Thus, we do not exercise discretion to deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Later, when considering what would ultimately become claim 1 of the ’809 patent, the Examiner did not explicitly address whether the ’985 provisional application supported the applicant’s newly introduced reference to two distinct buffers (i.e., a E-DCH buffer and a HARQ buffer). See Ex. 1002, 152–59, 365–83; see also Pet. 15 (“While Wager was discussed during the ’104’s prosecution . . . , it was not substantively addressed for the ’809; . . . the Claims recite, e.g., ‘HARQ buffer’ elements that are not in the ’104’s claims.” (bolding omitted)). For reasons we discuss more fully below, see infra Section IV.C, we determine that the Examiner erred by failing to revisit, in light of the added reference to a HARQ buffer, whether the ’985 provisional application supported the claims that issued in the ’809 patent. This error was material to the patentability of the challenged claims because the applicant’s arguments responding to the Examiner’s Wager rejections depend on Wager not being prior art. See Ex. 1027, 387–88, 560–62, 754; see also Pet. 15–16 (“The Examiner . . . erred by not rejecting the ’809 Claims over Wager.”). Because we determine, under the second part of the Advanced Bionics framework, that the Examiner erred in a manner material to patentability of the challenged claims, we need not address the first part of the Advanced Bionic framework. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LG argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical and computer engineering, computer science, or the equivalent thereof, and . . . two years of experience with networking and wireless communications systems,” and that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 18 (citing Ex. 1003 ¶¶ 53–54). Pantech does not presently contest this. See Prelim. Resp. LG’s proposed articulation is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’809 patent. See Ex. 1001, 1:25–38. Thus, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms, but the parties agree that the claim preambles of independent claims 1 and 6 are limiting. Pet. 18–19 (citing Ex. 1003 ¶¶ 55–57); Prelim. Resp. 17. We agree that, for our decision, we do not need to construe any of the terms explicitly. 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 discuss the claim terms below in the context of the prior art.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,313,809 - PTAB · Apr 9, 2024 · IPR2023-01270 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 on all petition grounds, finding a reasonable likelihood that LG would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute 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 the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District 4 US 20030076783 A1, filed Oct. 19, 2001, published Apr. 24, 2003 (Ex. 1009). 5 US 2004/0223507 A1, filed May 7, 2003, published Nov. 11, 2004 (Ex. 1006). 6 US 6,359,877 B1, filed July 21, 1998, issued Mar. 19, 2002 (Ex. 1008). Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)7 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation. Ex. 1300; Paper 24 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework is met because Kuchibhotla and Liu were cited in an Information Disclosure Statement (IDS) and because “the relevant teachings of Lucent are substantively similar to those of Khan (Ex. 1010).” Prelim. Resp. 28–29. We agree with Patent Owner that the citation of Kuchibhotla and Liu satisfies the first part of the Advanced Bionics framework. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.”); see also Ex. 1002, 34 (IDS listing Kuchibhotla), 36 (IDS listing Liu); Paper 24 at 2–3 (Petitioner’s acknowledgement that Kuchibhotla and Liu were cited). In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Advanced Bionics, Paper 6 at 10. The Examiner did not substantively discuss Kuchibhotla and Liu and, therefore, factor (c) (the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference) weighs against denying institution. Furthermore, as explained below in § II.F.1, we agree, on this record, with Petitioner’s contentions as to disputed limitation 1.e and, therefore, determine that factor (f) (the extent to which additional evidence and facts presented in the petition warrant reconsideration of the asserted references or arguments) weighs against denying institution.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical or computer engineering, computer science, or the equivalent thereof, and at least two years of experience with wireless communication systems.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’247 patent and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,869,247 - PTAB · Apr 9, 2024 · IPR2023-01273 · APJ Scott B Howard · IPR · Institution
Instituted review of claims 17–24 and 26–28 on all Petition grounds; Petitioner showed a reasonable likelihood that claim 17 was obvious over Sayana and Lee-689.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“grounds 1–3 (which includes all of the challenged independent claims), we consider whether Petitioner has shown that the Office materially erred. Becton, Dickinson factor (c) focuses on the record previously developed by the Office. Advanced Bionics, Paper 6 at 10. If the record, “is not well developed or silent, then a petitioner may show the Office erred by overlooking something.” Id. However, “if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record.” Id. at 10–11.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Id. at 6. “These factors relate to 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. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. (citing CTPG 58 (November 2019)).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Sayana’s “codebook subset restriction” information using Lee-689’s bitmap, resulting in a system in which a separate bitmap is used for each of Sayana’s codebooks (wideband and subband) to identify precoding matrices to restrict from each respective codebook, would have been obvious to a person having ordinary skill in the art. See Ex. 1003 ¶ 114; see also Ex. 1005 ¶ 85; Ex. 1007, 18:5-15. Specifically, Petitioner has sufficiently shown that a person having ordinary skill in the art would have made that modification in order to provide flexibility in the signaling of precoding matrices to UEs by specifying precoder subsets for each specific precoder codebook. See Ex. 1003 ¶114. Accordingly, based on the current record, Petitioner has sufficiently shown that the combination of Sayana and Lee-689 teaches limitation 17.a.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,136,924 - PTAB · Apr 9, 2024 · IPR2023-01272 · APJ Scott B Howard · IPR · Institution
Instituted inter partes review of claims 1–6 on all asserted grounds because the Petition showed 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
“d) Conclusion Regarding Claim 3 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 3 is unpatentable as obvious in view of Stewart and 3GPP-Summary 4. Claims 1, 2, and 4–6 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’486 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“comments received from stakeholders in response to a Request for Comments. Interim Fintiv Guidance 2. For example, “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Fintiv Guidance 7. Petitioner filed a Sotera-type stipulation. Ex. 1300. Specifically, Petitioner stipulates that if we institute this proceeding, “Petitioner will not pursue in Pantech Corp. v. LG Elecs. Inc., No. 5:22-cv-00113 (E.D. Tex.), the grounds of invalidity asserted in the IPR, or any other ground that was raised or could have reasonably been raised in the IPR.” Id. In view of the Sotera-type stipulation, we decline to exercise our discretion to deny institution. Interim Fintiv Guidance 7–8.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implementation of incremental redundancy for HSDPA” using a “new ‘ringbuffer’ scheme.” Ex. 1007, §§ 1, 2.4. 3GPP-Summary describes Motorola’s proposed improvement as interleaving separately systematic bits and parity bits and that the separately interleaved bits (systematic bits followed by parity bits) are then stored in a buffer. Id. § 2.4 (“The systematic bits and the parity bits from the R=1/3 mother code are interleaved separately. A transmitter buffer is defined, where the interleaved systematic bits are stored, followed by the interleaved parity bits.”). When combined with Stewart, the output of the different interleavers (which in Stewart are for the systematic bits, first parity bit stream, and the second parity bit stream (Ex. 1005, 4:14–19, 4:25–29, Fig. 4)) are buffered in a single buffer prior to transmission. See Ex. 1003 ¶¶ 175–178.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“3GPP-Summary teaches eight different redundancy versions: “Eight different initial positions are defined in the buffer, giving at maximum eight (non-self-decodable) redundancy versions.” Ex. 1007 § 2.4. The eight different redundancy versions are defined by their different initial positions. Id. 3GPP-Summary further teaches that “at transmission, bits are sequentially transmitted from the buffer, starting at the selected initial position” and that “(wrap around is used at the end of the buffer).” Id. A person having ordinary skill in the art would have understood, based on specific initial positions, that either systematic bits would have been selected the initial starting point (or redundancy version): So, a person of ordinary skill in the art would have understood that if the “starting point” is located in the area of the “transmitter buffer” that stores the “interleaved systematic bits,” systematic bits are read out from the “transmitter buffer” for transmission before the parity bits are read out. If the “starting point,” on the other hand, is located in the area of the “transmitter buffer” that stores the “interleaved parity bits,” the parity bits are read out from the “transmitter buffer,” and then reading wraps around to the systematic bits. Accordingly, 3GPP-Summary teaches reading out for transmission systematic bits followed by interleaved parity bits (i.e., selecting parity bits over systematic bits) and vice versa (reading out for transmission interleaved parity bits and wrapping out to read out interleaved systematic bits, i.e., selecting systematic bits over parity bits). Ex. 1003 ¶ 182 (citing Ex. 1007 § 2.4).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,065,486 - PTAB · Mar 8, 2024 · IPR2023-01271 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Lemay alone or with Alfke renders the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’839 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party suggests that any claim term departs from its ordinary and customary meaning, and we are aware of no evidence at this stage to suggest otherwise. And for our decision, we do not need to construe any of the terms explicitly. 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 discuss the claim terms below in the context of the prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“limitations 1.e(i)–(ix) in view of Alfke. LG sufficiently demonstrates the motivation to combine Lemay with Alfke because Lemay specifically teaches that Alfke’s message-processing disclosures are applicable to the embodiments in Lemay. Ex. 1005, 11:33–41; Pet. 5 n.2; Ex. 1003 ¶ 57. Alfke likewise specifically teaches that its disclosures are applicable to Lemay’s user interface. Ex. 1006, 11:4–12. Pantech also argues that LG’s obviousness arguments based on Lemay are deficient because they are conclusory, provide insufficient rationale, and incorporate material by reference from Dr. Madisetti’s declaration. Prelim. Resp. 28–30. We disagree that LG’s arguments are deficient in this respect because, to the extent (if any) that Alfke is not incorporated by reference into Lemay, the motivation to combine the references appears to be set forth in the references themselves.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,283,839 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Institution
The Board instituted IPR on claims 1–16 and 19, finding a reasonable likelihood that Google would prevail on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’737 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’737 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Christopher Schmandt, Petitioner contends a person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 5 (citing Decl. ¶ 35). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner states that “[n]o terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 5–6 (citing 37 C.F.R. § 42.100(b); Phillips, 415 F.3d 1303). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to construe any claim term expressly. D.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(1) Motivation to Combine Ditzik and Tchorzewski Petitioner explains that a POSITA would have been motivated to combine Ditzik and Tchorzewski because they are in the same field of endeavor as each other and the ’737 patent, directed to improving speech and handwriting recognition accuracy, and would have done so with a reasonable expectation of success. Pet. 21–22. According to Petitioner, one of ordinary skill in the art “would look to Tchorzewski when considering ways to improve Ditzik’s system” when multiple user’s use Ditzik’s tablet, each using a specific stored user message model to improve handwriting and speech recognition. Id. at 21 (citing Ex. 1005, 3:9–48; Ex. 1007, 1:5–19, 1:30–2:22; Decl. ¶¶ 68–69). Petitioner explains that the ordinary skilled artisan would have found the user-specific speech and handwriting recognition compatible with the system disclosed in Tchorzewski, where using different user message models would have “involved combining known elements according to known speech and handwriting recognition methods to yield the predictable result of improving user specificity for accurate recognition.” Id. at 21–22 (citing Decl. ¶ 69). Petitioner’s assertion is supported by the cited evidence and not disputed by Patent Owner. At this stage, and on this record, we determine that Petitioner has cited sufficient evidence and provided sufficient articulated reasoning to explain why, at the time of the filing of the ’737 patent, one of ordinary skill would have been motivated to combine the teachings of Ditzik and Tchorzewski to meet the limitation 1[c] of claim 1 in the manner proposed by Petitioner with a reasonable expectation of success.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’405 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’405 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 22–23 (citing Ex. 1004 ¶¶ 33–37). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 23. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the 5 The present record does not include any evidence of secondary considerations of nonobviousness. testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner states that “no terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 23 (citing Ex. 1004 ¶¶ 38–42). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to conduct express claim construction for any claim term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,904,405 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Mar 6, 2024 · IPR2022-01587 · APJ James P Calve · IPR · Final written decision
Claims 1–8 and 11–18 are unpatentable as obvious under § 103 over the asserted combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review of claims 1–8 and 11–18 (the “challenged claims”) of U.S. Patent No. 10,237,282 B2 (“the ’282 patent”) (Ex. 1001). Paper 2 (“Pet.”), 1. Fortinet, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying the standard in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims on all grounds asserted in the Petition. Paper 9 (“Dec. Inst.”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“3. Motivation to Combine and Expectation of Success Petitioner asserts a skilled artisan would have combined Nagayama” slip op. at 19
Patent outcomesUS 10,237,282 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,237,282 - PTAB · Mar 4, 2024 · IPR2023-01239 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’101 patent on the grounds of unpatentability presented. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Other 314aDecided for petitioner
“We are not persuaded it would be appropriate to deny institution merely on the basis of alleged trivial errors such as those identified by Patent Owner. See Prelim Resp. 1. To the extent Petitioner “cit[ed] the wrong Wang reference” (id.), this error was addressed in and corrected pursuant to our November 29, 2023, Order Granting Motion to Correct Clerical or Typographical Mistakes (Paper 13), entered prior to Patent Owner’s filing of the Preliminary Response, with Petitioner subsequently filing a corrected Petition and Declaration of Clifford Reader, Ph.D. Moreover, Patent Owner does not cite to any authority in support of discretionary denial of institution based on findings that a petitioner has not given a petition “due attention.” Cf. USPTO Notice of Proposed Rule Making “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board”, 88 Fed. Reg. 24,503 (April 21, 2023) available at https://www.govinfo.gov/content/pkg/FR-2023-04-21/pdf/2023- 08239.pdf. Accordingly, we decline to deny institution based on these arguments. 2. Identification of Claim Construction, Structure or Acts Corresponding to Means-Plus-Function Limitations Patent Owner asserts that the requested inter partes review should be” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the ’101 patent, the Examiner cited, inter alia, the Hejna prior art reference but did not apply or reject the claims based on that or any other prior art reference. Ex. 1002, 37, 39. There is no disagreement the Chou reference was never cited or considered by the Examiner. Under Becton, Dickinson factor (a), we consider the similarities and material differences between the asserted Chou and Hejna references. Patent Owner contends “[a]lthough Petitioner argues that Chou discloses or renders obvious element [1d], examination of the actual disclosure of Chou reveals that its disclosure is substantially the same as Hejna, prior art of record.” Prelim. Resp. 46. Patent Owner argues that Chou’s disclosures of (1) selecting a target arrival time for each frame sufficiently in advance of its playback time, (2) controlling an upper bound on the time of arrival of bits into the client buffer, and (3) selection of a code rate such that the frame’s arrival time is as close to the target arrival time as possible, relied upon by Petitioner for teaching limitation [1d], are substantially the same as that of Hejna. Id. at 46–47 (citing Pet. 35; Chou, Ex. 1004 ¶¶ 19, 27; Hejna, Ex. 2011, 4:60–63, 8:50–57, 14:3–7). Addressing Becton, Dickinson factors (a) and (b), Patent Owner fails to persuade us that Chou’s disclosure is substantially the same as or cumulative of Hejna’s. Even if, as alleged by Patent Owner, Hejna discloses subject matter corresponding to that disclosed by Chou, which subject matter is asserted by Petitioner as teaching claim 1’s element [1d], it is not clear why the disclosures are otherwise substantially the same. Although recognizing the Examiner’s reasons for allowance are based on the combination of limitations corresponding to claim 1’s elements [1b], [1d], and [1e], Patent Owner’s argument addresses only Petitioner’s reliance on Chou for teaching claim 1’s element [1d]. See Prelim. Resp. 46. Furthermore, evidence extrinsic to the disclosures themselves does not suggest Chou’s disclosure is likely to be the same or substantially the same as Hejna. For example, the two references list no inventor in common, do not relate back to a common priority document, we ascertain no commonly cited prior art references cited during their respective prosecutions, nor do we find any other indicia that the disclosures are the same or substantially the same. Compare Ex. 1004, code (75), with Ex. 2011, codes (56), (75).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“(ii) Motivations to Combine Second, at this preliminary stage, we are not persuaded by Petitioner’s contentions that a POSITA would have been motivated to combine the teachings of Chou and Wang. Pet. 74. As argued by Patent Owner, “Wang and Chou are directed to different technologies—active encoding applications and transport-layer protocols,” (see Prelim. Resp. 30, 34–35), and Petitioner does not persuasively explain, for example, why the two methods would be combined into a single method rather than implemented independently in their respective transport and application layers. (iii) Scope of Wang’s Teaching vis-à-vis Limitation [1d] Petitioner states “[i]f [Patent Owner] argues Chou doesn’t teach [1d], Wang does” (Pet. 62), concluding “Wang teaches calculating a change in code rate based on both the remaining time before reproduction start time and an available reproduction time, as required by [1d]” (id. at 63). Apart from a bare cross-reference to Ground 1 (see Pet. 62 (“See Ground 1, [1d]”)), Petitioner does not make any reference to Chou for teaching any aspect of limitation [1d] in connection the combination of Ground 2 (see generally id. at 62–65). Furthermore, although contending that “Chou and Wang both disclose controlling code rate to control buffer duration/fullness to prevent buffer underflow” (id. at 72), Petitioner does not clearly indicate that a POSITA would have had reason to combine Wang’s teaching of criteria used to maintain buffer fullness with Chou’s teaching of determining a code rate where the code rate “represents the data amount (the data size, e.g., the number of bytes) of content data for reproducing content at constant speed (reproducing content at 1x speed) for a unit time (e.g., one second)” (Ex. 1001, 7:7–11). Therefore, at this preliminary stage, we treat Petitioner’s Ground 2 as relying on Wang alone for teaching [1d].” slip op. at 54
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,752,101 - PTAB · Feb 7, 2024 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 10–13, 19, 21, and 33 on all petition grounds after finding a reasonable likelihood of success on claim 10 under § 103 over Ueda and the SIP and SDP …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic applies to the situation where a petitioner filed multiple, staggered petitions “challenging the same patent and same claims.” See Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16–17; see also Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). But here, Peloton initiated this proceeding and IPR2023-01240 on the same day. These circumstances do not implicate the roadmapping concerns that General Plastic seeks to alleviate. See Gen. Plastic, IPR2016-01357, Paper 19 at 16–17. Discretionary denial on the basis that a petitioner has filed multiple concurrent petitions challenging the same patent is addressed in the Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. The Trial Practice Guide states that, “[b]ased on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations,” because too many petitions “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. at 59. But “there may be circumstances in which more than petition may be necessary.” Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence. See Graham, 383 U.S. at 17–18. Considering these factors,14 we determine that Peloton has shown a reasonable likelihood that claim 10 is unpatentable as obvious over Ueda in view of the SIP and SDP Standards, for the reasons explained below.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Peloton argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427
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.