- PTAB · Jul 18, 2024 · IPR2024-00372 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 2–4 and 11 on all petition grounds, finding a reasonable likelihood that Samsung would show them unpatentable as obvious over Phek, Segall, Martins, and He.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Here, Petitioner has presented such a stipulation: if the Board grants institution, Petitioner “agrees not to pursue any grounds raised in the petition, or any grounds [Petitioner] could have reasonably raised in the petition, in [the] district court litigation or any parallel proceeding” Ex. 1028, 1. “Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022).5 Thus, we decline to exercise our discretion to deny the Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“present arguments specifically directed to the subject matter recited in the rest of the claim. See Prelim. Resp. Even so, Petitioner has the burden to show that the challenged claims are unpatentable. Thus, we have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them to be sufficient at this stage and on this record. From the current record, Petitioner has established a reasonable likelihood that it will prevail in demonstrating that claim 2 is unpatentable.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“digital video processing, or a related field.” Pet. 3–4 (citing Ex. 10036 ¶¶ 123–125). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. at 4. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 13. We also apply Petitioner’s proposed skill level in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s arguments, however, are based on an implicit construction for the second resolution converter. See § II.D.5.c supra. For the reasons discussed below, we disagree with Patent Owner’s arguments and the implicit construction. See id. Apart from rejecting the implicit construction of the second resolution converter, we agree with the parties that no claim term needs to be construed in this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,218,995 - Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Arista Networks, Inc. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103; claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“For reasons explained in the Petition and Petitioner’s Reply, we agree with Petitioner that the Baker–Wright–Holender ’699 combination teaches summing the two bandwidths determined in “allocating” steps 12.5 and 12.7 to determine a total allocation for each of the physical links—motivated by the known need to ensure that bandwidths do not exceed the available physical link capacity. We disagree with Patent Owner that Holender ’699’s discussion of summing is merely describing a physical constraint. Holender ’699 teaches normalizing the logical link capacities, which requires summing the logical link capacities. See Ex. 1007, 8:38–51. We credit Dr. Houh’s testimony that this “confirms that [Holender ’699’s] teachings about summing are not simply ‘explaining a physical constraint,’ but actually performed.” Ex. 1036 ¶ 61. Holender ’699 refers to capacities 𝐶𝐶𝑗𝑗 as “logical link capacities for each logical link j over all logical networks. Ex. 1007, 6:52–55. But when mapped to physical links, Holender ’699 denotes capacities 𝐶𝐶𝑘𝑘𝑘𝑘 as “capacities of the logical links [𝑙𝑙] that need capacity on the k:th physical link.” Ex. 1007, 8:38–43. In other words, they are the capacities, or bandwidths, allocated to each physical link 𝑘𝑘 for implementing associated logical link 𝑙𝑙. See also id. at 6:60–67 (describing a matrix designed to indicate “if logical link j needs capacity on the k:th physical link.”).” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“necessary because the construction does not resolve any contested issues. Pet. Reply 8–10 (citing Ex. 1005 ¶¶ 16, 62; Ex. 1006 ¶¶ 5, 24; Ex. 1003 ¶ 96; Ex. 1036 ¶¶ 49–50). But if a construction is necessary, Petitioner argues that the we should construe in response to as “using,” consistent with how the claimed invention is described in the ’431 patent. Id. at 10–11 (citing Ex. 1001, 2:52–6:10, 8:52–9:2; Ex. 1036 ¶¶ 7–11). Petitioner disagrees that the term means “based on” because limitation 1.3 uses the phrase based on, suggesting that the applicant made a conscious decision to use different language in limitation 1.5. Id. at 11 (citing Ex. 1036 ¶ 11). Patent Owner responds that its two proposed constructions are synonymous, and argues that Petitioner agrees that in response to encompasses “using” or “using information from.” PO Sur-reply 8 (citing Ex. 1001, 2:22–26). Patent Owner contends that its proposed construction resolves a controversy because in Patent Owner’s view, the Baker–Wright combination does not use information from the recited mapping to allocate bandwidth. Id. at 9–12 (citing Ex. 1006 ¶¶ 5, 17, 24; Ex. 2009, 52–56; Ex. 2008 ¶¶ 62–76). Similarly, Patent Owner contends that Holender ’699 does not teach mapping. Id. at 12–13 (citing Ex. 1007, 3:15–17; Ex. 2008 ¶¶ 89–92). We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments persuasive that Baker teaches allocating bandwidth as part of its resources and that, in light of Wright and Holender ’699, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. Holender ’669 provides further supporting disclosure. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 33; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 9–12 (citing Ex. 1003 ¶¶ 42–46, 48; Ex. 1021 ¶¶ 100–101). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 11–12 (citing Ex. 1003 ¶ 47; Ex. 1021 ¶¶ 102–104).” slip op. at 34
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationAll claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00168 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 based on five grounds combining Klassen with Geiger, Kao, and/or Poulin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “a working knowledge of network communications, including ring networks and latency calculation methodologies” and “a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of work experience in network communications.” Pet. 9 (citing Ex. 1003 ¶ 19). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 9 (citing Ex. 1003 ¶ 19). Patent Owner states that it uses the same definition of a person of ordinary skill in the art. PO Resp. 4. We determine Petitioner’s level of ordinary skill is supported by testimonial evidence and is consistent with the level reflected by the ’485 patent and the asserted prior art, and we apply Petitioner’s level of ordinary skill in this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions (Pet. 10; PO Resp. 3), but Patent Owner notes that the district court in the parties’ co-pending litigation construed certain claim elements, such as the preamble and “latency measurement packet” (PO Resp. 3 (citing Ex. 2001, 3; Ex. 2005 ¶ 38). We determine it is unnecessary to construe any terms. 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 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Contrary to Patent Owner’s focus on latency evaluations, “[t]he field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). “Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address.” Netflix, 80 F.4th at 1359. As noted by Petitioner, Geiger and the ’485 patent “both operate with ‘packet-switched network communications.’” Reply 17. In fact, Patent Owner acknowledges that the ’485 patent relates to packet-switched networks in describing the field as “latency evaluations in packet-switched networks.” PO Resp. 8. Likewise, the ’485 patent describes its field of invention broadly with latency measurements being the particular focus within the field, stating “[t]he present invention relates generally to network communication systems and protocols, and specifically to methods of latency measurements in packet-switched networks, and particularly in ring networks.” Ex. 1001, 1:6–9. And Geiger, describing its field of invention, states “[t]he present invention relates generally to data communication systems and, in particular, to a method and apparatus for adaptively compressing and expanding data packets in a data communication system.” Ex. 1006, 1:7–10. Further supporting Petitioner’s relatively broad recitation of the field of endeavor, each expert states that a person of ordinary skill would have had “approximately two years of work experience in network communications.” Ex. 2005 ¶ 24; see also Ex. 2005 ¶ 6 (Dr. Rouskas stating he is an expert “in network communication systems and especially packet-switched network communication systems and the various fields therein, including fields related to latency”). Weighing the evidence of record, we agree with Petitioner that the relevant field of endeavor of the ’485 patent is packet-switched network communications, and we further agree that Geiger is from the same field. Because we determine Geiger satisfies the field-of-endeavor test for analogous art, we do not reach the reasonably-pertinent test.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The evidence of record establishes that disregarding packets received out of order was a known solution in the field of network communications. STRING CITE; Ex. 1051, 49:1–5 (Dr. Rouskas agreeing that a person of ordinary skill would understand the process for dropping out-of-order packets). Further, we credit Dr. Houh’s testimony that a person of ordinary skill would have understood the value in testing a network in view of the network’s ordinary packet handling such that “[t]reating out-of-order probative test packets just like common protocols treat out-of-order packets transmitted on the network would offer further insight into normal network operations.” Ex. 1003 ¶ 134. Contrary to Patent Owner’s arguments (PO Resp. 16–17), combining the relied-upon teachings of Geiger with Klassen would not have required considering out-of-order packets to be timed out, nor would the combination render Klassen’s teachings in operable; Patent Owner’s expert Dr. Rouskas agreed that a person of ordinary skill would understand the process for dropping out-of-order packets. Ex. 1051, 49:1–5. Weighing the evidence of record, we agree with Petitioner that a person of ordinary skill that understands the process for dropping out-of-order packets would have understood how to implement such a process in Klassen’s system with predictable success. See Pet. 29–30. Further, Klassen’s teachings regarding handling of timed-out packets do not rise to the level of teaching away from the proposed combination because nothing in Klassen criticizes, discredits, or otherwise discourages the known process of discarding out-of-order packets. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004). Further, “a reference does not teach away if a skilled artisan, upon reading the reference, would not be ‘discouraged from following the path set out in the reference,’ and would not be ‘led in a direction divergent from the path that was taken by the applicant.’” Adapt Pharma Operations Ltd. v. Teva Pharms. USA, Inc., 25 F.4th 1354, 1370 (Fed. Cir. 2022) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)). Indeed, Klassen does not specifically address out-of-order packets, much less direct a person of ordinary skill to handle out-of-order packets in ways divergent from the known process of dropping such packets as described in Geiger. See Ex. 1005, 9:60–63; Ex. 1051, 70:20–71:5; Reply 20–21. Accordingly, weighing all of the evidence of record, we determine Petitioner has established that a person of ordinary skill would have had reason to combine the cited teachings of Geiger with the teachings of Klassen.” slip op. at 18
Patent outcomesUS 7,113,485 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,113,485 - PTAB · Jun 28, 2024 · IPR2024-00356 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, and 13–14 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”). We therefore institute inter partes review as to all of the challenged claims of the ’636 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Ghiasi and is consistent with the ’636 patent. Accordingly, we apply Petitioner’s articulation of the level of ordinary skill in the art of the ’636 patent.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner points to the ’636 patent as defining “‘property’ as “plain text that defines operations intended and expected in design data to be verified.” Pet. 13 (citing Ex. 1001, 1:20–22; Ex. 1003 ¶ 70). We preliminarily adopt Petitioner’s construction, to which Patent Owner does not respond, for purposes of this decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we determine Petitioner has adequately shown reasons for combining Abarbanel and Kobayashi for purposes of institution. We do question whether after a trial the combination will meet the preponderance of the evidence burden applied to final written decisions. We are not convinced that the lack of clarity is so compelling that we cannot decipher how the Petitioner asserts why a person or ordinary skill in the art would have combined Abarbanel and Kobayashi. Any one of the arguments made by Petitioner is sufficient at this stage, even if Petitioner presents contradictory alternatives. At this stage of the proceeding, alternative inconsistent theories for combining the references are permissible. We leave for trial the question whether or not Abarbanel’s RCTL technology would have been combinable with the state machine/statelist technology of Kobayashi. However, on this record, and giving weight to the Ghiasi Declaration, Petitioner sufficiently supports its assertion that a person of ordinary skill in the art “would have been motivated to combine Abarbanel with teachings for graphically editing IC specifications, including flowcharts, because the prior art is replete with teaching, suggestion, and motivation to do so.” Ex. 1003 ¶¶ 81–85. Furthermore, Abarbanel suggests related work involves “simulation efforts” with “automatically translating state machines.” Ex.1003 ¶ 122 (quoting Ex. 1004, 542).” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,603,636 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 24, 2024 · IPR2024-00319 · APJ Russell E Cass · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of success on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that “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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not established a reasonable likelihood that any of the challenged claims are unpatentable. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Almeroth, Petitioner argues that one of ordinary skill “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field.” Pet. 6 (citing Ex. 1005 ¶ 41). Petitioner further states that “[r]elevant work experience would include experience with cellular telecommunications and networking, radioaccess network architectures, protocols, and signal propagation in wireless networks,” and that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not set forth a proposed level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and not disputed by Patent Owner as reasonable and consistent with the prior art. See Okajima v Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- BurdenNot shown unpatentable
“Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20
Claim constructionDiscretionary denialcites KSRPatents in suitUS 8,891,347 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00315 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 9, 10, 12, 20, 21, and 23 on all petition grounds, granted joinder to IPR2024-00137, and authorized withdrawal of Samsung’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Carriers’ parallel district-court case. The arguments and facts are substantively the same as those presented in the T-Mobile IPR, except Petitioner here is not a defendant in the Carriers’ parallel district-court case. In the T-Mobile IPR, we found that factor 1 is neutral, factors 2, 3, and 5 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile 6 See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). IPR, Paper 15, 10–14. Because Petitioner in the instant proceeding is not a defendant in the Carriers’ parallel district-court case, we find that factor 5 weighs against exercising discretion to deny institution in the instant proceeding. Regarding the other factors, for the same reasons discussed in the decision to institute in the T-Mobile IPR, we find that factor 1 is neutral, factors 2 and 3 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile IPR, Paper 15, 10–14. We turn to Patent Owner’s arguments based on the Petitioner’s parallel district-court case. Our analysis of factors 1 and 4 is the same as that presented in the T-Mobile IPR because no stay has been requested in Petitioner’s parallel district-court case and Petitioner has agreed to be bound by the same stipulation submitted in the T-Mobile IPR. Joinder Mot. 1. Based on the facts presented by the parties, including the May 5, 2025 trial date, we find that factors 2, 3, and 5 weigh marginally in favor of exercising discretion to deny institution. Taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11, 6), we conclude that the evidence of record and our analysis of factors 1–5 relating to both district-court cases favors exercising our discretion to deny institution of an inter partes review. Regarding factor 6, for the reasons discussed in our institution decision in the T-Mobile IPR, we determine, on this preliminary record, that the merits here are compelling. Accordingly, we decline to exercise our discretion to deny institution” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 21–56, with T-Mobile IPR, Paper 1, 6, 25–60. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in” the T-Mobile IPR and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in” the T-Mobile IPR and is “signed by the same expert.” Id. at 1. Patent Owner states that its arguments on the merits in its Preliminary Response “are likewise ‘copycat’ of the merits arguments Patent Owner presented in its preliminary response in IPR2024-00137.” Prelim. Resp. 1 n.1. We instituted inter partes review of claims 9, 10, 12, 20, 21, and 23 of the ’888 Patent on May 22, 2024, based on the petition filed in the T-Mobile IPR after consideration of all arguments and evidence presented by the parties including Patent Owner’s arguments in its Preliminary Response. T- Mobile IPR, Paper 15. For the same reasons discussed in the Decision on Institution in the T-Mobile IPR, we find Petitioner has demonstrated a reasonable likelihood of showing at least one claim of the ’888 patent is unpatentable. See id. Accordingly, we find the Petition warrants institution of inter partes review of all challenged claims on all grounds raised.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Joinder Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T-Mobile IPR. See Joinder Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Joinder Mot. 6, 9–11. Accordingly, joinder to the T-Mobile IPR would further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Therefore, for the reasons given, we grant Petitioner’s Motion for Joinder and join Petitioner to the T-Mobile IPR.” slip op. at 13
Discretionary denialPatents in suitUS 9,094,888 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00317 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 23–27 on all petition grounds and granted Samsung’s motion to join the T-Mobile IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Institution of Inter Partes Review The Petition in this proceeding asserts the same grounds of unpatentability as the grounds on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in T-Mobile USA, Inc. et al. v. Cobblestone Wireless, LLC, IPR2024-00135” and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in IPR2024- 00135 and signed by the same expert.” Id. at 1.” slip op. at 7
- Parallel petitionsDecided for petitioner
“103(a) Chang III. ANALYSIS A. Discretionary Denial Argument Patent Owner asserts “[t]o the extent that the Board institutes review of the First Petition, institution of the Second Petition should be denied as an unnecessary parallel petition.” Prelim. Resp. 3. We denied institution in the first ranked proceeding. See Samsung Electronics America, Inc., v. Cobblestone Wireless LLC, IPR2024-00318, Paper 11 (PTAB June 21, 2024). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T- Mobile IPR. See Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Mot. 6, 9–11. Accordingly, joinder to the T-” slip op. at 11
Discretionary denialPatents in suitUS 8,554,196 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - PTAB · Jun 11, 2024 · IPR2024-00245 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’150 Patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 35 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.7 Pet. 88 (citing Ex. 1023). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with 7 See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).8” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner states that (i) “coded multi-view video signal,” recited in each of the challenged claims, “encompasses a coded video signal for two or more viewpoints, including at least one base viewpoint and at least one nonbase viewpoint” (Pet. 7), and (ii) “picture signal,” also recited in each of the challenged claims, “refers to a signal that represents at least one picture from a viewpoint” (Pet. 9). Petitioner also identifies four elements of claim 1 that Petitioner contends are means-plus-function claim elements under 35 U.S.C. § 112 ¶ 6 (pre-AIA). Patent Owner states that for the purposes of its Preliminary Response, Patent Owner “does not dispute Petitioner’s proposed constructions . . . , including terms that it contends are subject to 35 U.S.C. § 112(6).” Prelim. Resp. 10. At this stage, we apply the parties’ agreed-upon constructions for the purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“and DTS are provided in optional fields of packetized elementary stream packets. Ex. 1005, 7:19–25. Further, “[t]he video DTS . . . indicates the time when the picture needs to be decoded by the STD” (Ex. 1005, 7:47– 49), and on the current record, we understand Petitioner to cite the DTS parameters encoded in the transport stream for enhancement layer pictures as teaching the claimed coded information representing a desired delay time. Pet. 33. Among other examples, Petitioner (Pet. 34) and Dr. Reader (Ex. 1005 ¶ 201) cite Chen-736’s example of the formula DTSEi = DTSLi +1.5F, where F is a time interval based on the frame rate (Ex. 1005, 8:9–20), as indicating that DTSEi represents the start of decoding of the ith picture in the enhancement layer being delayed 1.5F relative to the start of decoding of the ith picture frame of the base layer. Pet. 36 (citing Ex. 1003 ¶ 201); see Pet. 35–40 (citing additional examples of serial and parallel decoding with similar DTS calculations). At this stage, we find Petitioner’s position that the claim’s recitation that the coded information must “represent” the desired delay time to be a reasonable reading of the plain language of the claim such that a DTS value can represent the desired delay time even if it requires calculation. Pet. 35 n.8. Even if Chen-736’s use of F-based offsets as time intervals “is different than the concept of a desired delay between decoding” and Chen-736 recognizes the distinction between PTS and DTS (Prelim. Resp. 14–15), on the current record, these arguments do not rebut Petitioner’s mapping of Chen-736 to the claim language. Similarly, Patent Owner’s argument that Chen-736 teaches a DTS for all picture signals, including the base viewpoints and non-base viewpoints (Prelim. Resp. 16), does not rebut Petitioner’s mapping of Chen-736’s enhancement-layer DTS to the claim language. At this stage, on the current record we determine Petitioner has sufficiently shown that Chen-736 teaches or reasonably suggests this claim element.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,139,150
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.