• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.

  RulingsInstitution decision

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

    “2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,814,071
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12

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

    “have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37

  Patent outcomesUS 11,265,404 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCNo claims unpatentable
  PTAB · Apr 30, 2025 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–8 were not shown unpatentable because DiPerna964 and Strack do not teach or suggest the panic button readying itself to perform the claimed functions.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “After review of the ’404 patent’s description, we find no disclosure that pressing the panic button together with another button causes the panic button to ready itself to perform functions (1) and (2) as recited in limitation 1[d]. The closest descriptions we find to limitation 1[d] are that the safety switch readies the panic button to contact 911 (Ex. 1001, 6:59–62), that the panic button may be activated by pressing the panic button with another button (id., 3:59–67, and that the panic button may start a speech recognition process that can trigger the device (id., 7:61–62). Consequently, claim 1 is itself the best source for determining what the claim language means. We determine that the ordinary and customary meaning of the “ready itself” feature of claim 1 is that the panic button “prepares itself to be triggered to perform the panic button functions (1) and (2).” Since the intrinsic evidence is sufficiently clear to discern the meaning of the “ready itself” limitation, we do not resort to extrinsic evidence. See Phillips, 415 F.3d at 1317 (explaining that extrinsic evidence is less significant than intrinsic evidence); Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (Court of Appeals gives primacy to intrinsic evidence and resorts to extrinsic evidence only if consistent with intrinsic evidence); Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1324 (Fed. Cir. 2023) (Court of Appeals stating that its “decision rests solely on the intrinsic evidence”).” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Thus, the ’353 application describes that moving the safety switch into position readies the panic button to contact 911, which is not the same as the panic button being activated to ready itself to perform functions (1) and (2) required by claim 1 of the ’404 patent. Patent Owner’s reliance on disclosures elsewhere in the ’353 application is unavailing. PO Resp. 5–8 (citing Ex. 1006, 15, 17, 19–21, 23, 25); PO Sur-Reply 2–3 (citing Ex. 1006, 15, 17, 19–20, 24–25)). For example, while the ’353 application does mention voice activation with a codeword and activation by depressing of the panic button together with another button (see, e.g., Ex. 1006, 17, 21, 24–25), it does not mention that depressing the panic button together with another button causes the panic button to ready itself to perform recited functions (1) and (2). The application explains that “[t]he [panic] button can send a signal to a controller inside the device to activate [the code word activation] process” and “[t]he [panic] button can start the speech recognition process in one embodiment, to trigger the device.” Ex. 1006, 25. But that describes readying the device for activation by the code word, not readying the button to perform the recited functions. The ’353 application also mentions the word “ready” in relation to using a self-defense mechanism such as pepper spray, which does not appear to be related the readying of the panic button recited in claim 1. Ex. 1006, 15, 19–20. Petitioner has thus met its burden to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority.3 Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for limitation 1[d], which it has not done on this record. PO Resp. 5–8; PO Sur-Reply 2–3.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “DiPerna964 discloses a separate “safety” switch that readies the panic button to contact 911 upon being pressed (Ex. 1028 ¶ 41), but there is no mention of pressing the panic button together with another button to cause the panic button to “ready itself” to perform panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit, as limitations 1[d] and 1[e] require. DiPerna964 mentions pressing two buttons together to activate the panic button (see, e.g., Ex. 1028 ¶¶ 17, 23–25, 27), but not to “ready itself” to perform recited functions (1) and (2). Petitioner relies on Strack’s triggering the collection of audio, video, and location data for transmission to a remote location as equivalent to a panic button readying itself to, when activated, perform the panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit. Pet. 15–17 (citing Ex. 1002 ¶¶ 76–88). We do not agree with Petitioner’s contention because Petitioner fails to explain how Strack’s button press that collects and then transmits audio, video, and location data would ready the panic button to perform recited functions (1) and (2). It appears that Strack’s button press readies the device, not the button, to perform the functions. As neither DiPerna964 nor Strack nor their combination teach or suggest limitations 1[d] and 1[e], we determine it is unnecessary to proceed further with the obviousness analysis. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed.Cir.2006) (stating that we consider motivation to combine and reasonable expectation of success only “if all the elements of an invention are found in a combination of prior art references”)).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which appears consistent with the educational level, technology, problems and solutions identified in the ’404 patent and prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 18

  Patent outcomesUS 11,265,404 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

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

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

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

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

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

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

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

  • BurdenNot shown unpatentable

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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. 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)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Howard Industries, Inc. v. Capsa Solutions LLCAll claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 3 and 4 are unpatentable: claim 3 as obvious over Clark, Manner, and Santoro; claim 4 as obvious over Clark and Manner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have at least a four-year college degree in mechanical engineering, biomedical engineering, industrial design, or a closely related field and at least one year of experience in product development and design for commercial workstations and work platforms.” Pet. 7 (citing Ex. 1004 ¶¶ 17–18). Petitioner further contends that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a pertinent discipline involving mechanical product design, such as mechanical engineering, with 2-3 years experience in in [sic] the design, manufacture, or analysis of mechanical devices.” PO Resp. 18. Patent Owner alternatively argues that a person of ordinary skill in the art “with a 2-year mechanical engineering diploma and . . . 4-6 years of experience in in [sic] the design, manufacture, or analysis of mechanical components and devices.” Id. Patent Owner contends that “Petitioner submits a somewhat different, and broader, definition” of a person of ordinary skill in the art than Patent Owner’s definition because Petitioner’s definition includes industrial design which is a field that does not require the same level of hard sciences as Patent Owner’s definition. Id. Patent Owner further contends that “the Petition should be denied under either party’s definition of a [person of ordinary skill in the art] as Petitioner has failed to meet its burden of establishing a prima facie case of obviousness.” Id. at 18–19 (citing Ex. 2012 ¶¶ 45–47). We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “We have considered the parties’ respective arguments concerning the construction of this claim term and, for the following reasons, we adopt Patent Owner’s construction of “compartment” as “an enclosed space for containing an item.” First, Petitioner does not dispute that it agreed to adopt Patent Owner’s construction in the district court proceeding between the parties. Pet. Reply 5; Tr. 8:14–21. Second, Petitioner cites to several Board Decisions in which the panels construed claim terms even though the parties agreed to constructions in parallel litigation and argues that the agreement between Petitioner and Patent Owner in the parallel district court proceeding has no bearing on this proceeding. Id. (citing Cook Grp. Inc. v. Cook Med. LLC, IPR2017-00135, Paper 7 at 7–8 (PTAB May 16, 2017); Arris Int’l PLC v. Sony Corp., IPR2016-00834, Paper 54 at 26–29 (PTAB Sept. 28, 2017); Apple Inc. v. VirnetX Inc., IPR2015-00810, Paper 44 at 18–19 (PTAB Aug. 30, 2016)). But, those cited decisions are not precedential and two of them were decided under the “broadest reasonable interpretation standard,” not the Phillips standard, thereby rendering a stipulation between the parties in district court less informative to the panels’ determinations. See Apple, IPR2015-00810, Paper 44 at 18; Cook Grp., IPR2017-00135, Paper 7 at 7. More importantly, given Petitioner’s agreement with Patent Owner’s construction in the district court, we see no reason to apply a different construction here simply because Petitioner proposed that construction prior to agreeing to the construction with Patent Owner in district court. Tr. 11:21–25.8” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that claims “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365. First, “when a patentee sets out a definition and acts as his own lexicographer” or second, “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp., 90 F.3d at 1580). In order for the patentee to act as his or her own lexicographer, the patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning . . . [i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to define the term. Id. Further, in order to establish disavowal of claim scope, the specification must “make[] clear that the invention does not include a particular feature . . . even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. As noted above, the underlying premise of Patent Owner’s proposed construction is that the language “disposed in” is broad enough to encompass compartments not “entirely in” or “contained in” the recited portion of the work platform.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “For the following reasons, we determine that the portions of the prosecution history of the ’650 patent relied on by Patent Owner do not “prov[e] the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art.” Trivascular, 812 F.3d at 1063– 64.14 Patent Owner argues that the prosecution history redefined the term forward “by disclaiming workstations that are mounted on top of or over the height adjustment mechanism.” PO Resp. 29. Claims 3 and 4 recite “a work platform including a work surface and compartments for containing items” not a “workstation.” It is unclear what Patent Owner is referring to as the “workstation,” i.e., the recited “work platform,” the recited “work surface,” or the combination of “work platform,” “work surface,” and the recited “compartments.” Patent Owner injects further ambiguity by rephrasing the disclaimer, as “Applicant explicitly disclaimed carts having work stations mounted entirely to the top of the height adjustment mechanism (e.g., carts like Clark and Reeder).” Id. at 30 (emphasis added). Regardless of these 14 Because of our determination that the requirements for a clear and unmistakable disclaimer are not met by the cited portions of the prosecution history of the ’650 patent, we need not and do not reach the question of relevance of the statements in the prosecution of the ’650 patent to the claims of the ’668 patent. ambiguities, Patent Owner misinterprets the statements in the prosecution history. The applicant’s primary argument was that an ordinarily skilled artisan would not have incorporated moveable work surfaces above the “compartment” of Clark. Ex. 1033, 137–38. The applicant’s arguments, thus, do not support Patent Owner’s argument here that “workstations” should not be mounted “over or on top of the height adjustment mechanism.” See id.” slip op. at 32

  Patent outcomesUS 7,594,668 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,594,668
• Howard Industries, Inc. v. Capsa Solutions LLCAll claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01275 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–3, 5, 6, and 8 are unpatentable as obvious over Clark and Manner (claims 1–3, 5, 8) and Clark, Manner, and Hartman (claim 6).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a four-year college degree in mechanical engineering, biomedical engineering, industrial design, or a closely related field and at least one year of experience in product development and design for commercial workstations and work platforms.” Pet. 8 (citing Ex. 1003 ¶¶ 17–18). Petitioner further contends that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a pertinent discipline involving mechanical product design, such as mechanical engineering, with 2-3 years experience in in [sic] the design, manufacture, or analysis of mechanical devices.” PO Resp. 17–18. Patent Owner alternatively argues that a person of ordinary skill in the art “with a 2-year mechanical engineering diploma and . . . 4-6 years of experience in in [sic] the design, manufacture, or analysis of mechanical components and devices.” Id. at 18. Patent Owner contends that “Petitioner submits a somewhat different, and broader, definition” of a person of ordinary skill in the art than Patent Owner’s definition because Petitioner’s definition includes industrial design which is a field that does not require the same level of hard sciences as Patent Owner’s definition. Id. Patent Owner further contends that “the Petition should be denied under either party’s definition of a [person of ordinary skill in the art] as Petitioner has failed to meet its burden of establishing a prima facie case of obviousness.” Id. at 18–19 (citing Ex. 2012 ¶¶ 45–47). We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “i. “actuator” Petitioner contends in district court that the term “an actuator for controlling the driver” is indefinite for invoking means-plus-function claim language without providing corresponding structure. Pet. 9 (citing Ex. 1023, 36–40; Ex. 1024, 28–32). For the purposes of this proceeding, Petitioner adopts the construction Patent Owner presented in the district court, i.e., “a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals.” Id. at 10 (quoting Ex. 1012, 3–4). Patent Owner does not address this term in this proceeding. See generally PO Resp.; Sur-reply. Because it is uncontested in this proceeding, we apply Patent Owner’s construction from the district court proceeding as presented here by Petitioner.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “Although not dispositive to our Decision, we apply the plain and ordinary meaning of this term, which does not require the work surface to be curved.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that claims “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365. First, “when a patentee sets out a definition and acts as his own lexicographer” or second, “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp., 90 F.3d at 1580). In order for the patentee to act of his or her own lexicographer, the patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning . . . [i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to define the term. Id. Further, in order to establish disavowal of claim scope, the specification must “make[] clear that the invention does not include a particular feature . . . even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. As noted above, the underlying premise of Patent Owner’s proposed construction is that the language “disposed in” is broad enough to encompass compartments not “entirely in” or “contained in” the recited portion of the work platform. We start our analysis with the claim language. Claim 1 recites “wherein the work platform includes a portion projecting, relative to the height adjustment mechanism, in a forward direction . . . the compartment is disposed in the portion of the work platform projecting in the forward direction.” Ex. 1001, 14:39–43. By reciting “a portion projecting, relative to the height adjustment mechanism,” the claim language implies that the entire work platform is not required to project in the forward direction. We also note that nothing in claim 1 requires any particular size of the compartment. The only recitation in the claim regarding location of the compartment is that it “is disposed in the portion of the work platform projecting in the forward direction,” but that language on its face does not require or suggest that the compartments are “entirely in” or only “contained in” the recited portion of the work platform. In other words, nothing in the claims expressly restricts the compartments from being disposed in the “portion” recited as well as another portion of the work platform that does not project in the forward direction. Turning to the Specification, Patent Owner does not direct us to any” slip op. at 18

  Patent outcomesUS 8,215,650 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,215,650
• Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. et al. v. Cerence Operating CompanyInstituted
  PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution

  The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.

  RulingsInstitution decision

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

    “letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,395,078
• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135

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.