- Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for 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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - PTAB · Apr 25, 2024 · IPR2023-01268 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–10, finding a reasonable likelihood of success on the asserted Paasonen and Hotelling grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–10 of the ’631 patent to determine whether:” slip op. at 48
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 27–47. A USPTO Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”) provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation. Ex. 1300; Paper 24, 8. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner acknowledges that it and Patent Owner have proposed constructions in the district court litigation, but contends that “the Board need not construe these terms because the prior art discloses or renders obvious embodiments within the indisputable scope of the claims under the parties’ and any reasonable interpretations.” Pet. 13. Patent Owner similarly points to the proposed constructions in the district court litigation but also does not propose any claim construction in its Preliminary Response. See Prelim. Resp. 24–25. At this time, we determine that no terms of the challenged claims require explicit construction. See, e.g., 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Here, Petitioner makes a sufficient showing that “Paasonen and Nakano are in the same field as the ’631 [patent]—which includes mobile interfaces,” wherein “Paasonen discloses sequentially displaying the four most-recently active applications in the application switcher panel,” and “Nakano’s teachings permit a user to browse additional applications.” Pet. 44 (citing Ex. 1001, 2:32–51; Ex. 1005, 1:6–9, 3:41–4:25; Ex. 1006 ¶¶ 1, 6, 14–15; Ex. 1003 ¶ 119). On this present record, we are sufficiently persuaded by Petitioner’s showing, supported by the testimony of Dr. Madisetti, that a POSITA would have been motivated “to modify Paasonen’s application switcher panel with Nakano’s scrolling teachings in order to more easily access recently-active applications by scrolling through more than four icons.” Id. at 45; Ex. 1003 ¶ 120. Having reviewed all of Petitioner’s assertions, as well as the supporting evidence, we determine on this record that Petitioner has made a sufficient showing Paasonen in combination with Nakano discloses “in response to a first command for sequentially displaying icons, performing sequential display of icons such that an icon corresponding to the second work process is displayed,” “the icon corresponding to the second work process is displayed in the designated portion of the display,” as recited in claim 1. Further, having reviewed all of Petitioner’s assertions and the supporting evidence, we determine on this record that Petitioner has made a sufficient showing of motivation to combine Paasonen and Nakano. For the foregoing reasons, we determine that the evidence and arguments presented show a reasonable likelihood that Petitioner would prevail in establishing that the subject matter of claims 1–10 would have been obvious over Paasonen and Nakano.” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,575,631 - PTAB · Apr 25, 2024 · IPR2023-01267 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Wager and TS25.321.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)11 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. LG has submitted such a stipulation. Prelim. Reply 1; Ex. 1300. Thus, we do not exercise discretion to deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Later, when considering what would ultimately become claim 1 of the ’809 patent, the Examiner did not explicitly address whether the ’985 provisional application supported the applicant’s newly introduced reference to two distinct buffers (i.e., a E-DCH buffer and a HARQ buffer). See Ex. 1002, 152–59, 365–83; see also Pet. 15 (“While Wager was discussed during the ’104’s prosecution . . . , it was not substantively addressed for the ’809; . . . the Claims recite, e.g., ‘HARQ buffer’ elements that are not in the ’104’s claims.” (bolding omitted)). For reasons we discuss more fully below, see infra Section IV.C, we determine that the Examiner erred by failing to revisit, in light of the added reference to a HARQ buffer, whether the ’985 provisional application supported the claims that issued in the ’809 patent. This error was material to the patentability of the challenged claims because the applicant’s arguments responding to the Examiner’s Wager rejections depend on Wager not being prior art. See Ex. 1027, 387–88, 560–62, 754; see also Pet. 15–16 (“The Examiner . . . erred by not rejecting the ’809 Claims over Wager.”). Because we determine, under the second part of the Advanced Bionics framework, that the Examiner erred in a manner material to patentability of the challenged claims, we need not address the first part of the Advanced Bionic framework. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LG argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical and computer engineering, computer science, or the equivalent thereof, and . . . two years of experience with networking and wireless communications systems,” and that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 18 (citing Ex. 1003 ¶¶ 53–54). Pantech does not presently contest this. See Prelim. Resp. LG’s proposed articulation is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’809 patent. See Ex. 1001, 1:25–38. Thus, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms, but the parties agree that the claim preambles of independent claims 1 and 6 are limiting. Pet. 18–19 (citing Ex. 1003 ¶¶ 55–57); Prelim. Resp. 17. We agree that, for our decision, we do not need to construe any of the terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We discuss the claim terms below in the context of the prior art.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,313,809 - PTAB · Apr 9, 2024 · IPR2023-01270 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 on all petition grounds, finding a reasonable likelihood that LG would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District 4 US 20030076783 A1, filed Oct. 19, 2001, published Apr. 24, 2003 (Ex. 1009). 5 US 2004/0223507 A1, filed May 7, 2003, published Nov. 11, 2004 (Ex. 1006). 6 US 6,359,877 B1, filed July 21, 1998, issued Mar. 19, 2002 (Ex. 1008). Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)7 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation. Ex. 1300; Paper 24 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework is met because Kuchibhotla and Liu were cited in an Information Disclosure Statement (IDS) and because “the relevant teachings of Lucent are substantively similar to those of Khan (Ex. 1010).” Prelim. Resp. 28–29. We agree with Patent Owner that the citation of Kuchibhotla and Liu satisfies the first part of the Advanced Bionics framework. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.”); see also Ex. 1002, 34 (IDS listing Kuchibhotla), 36 (IDS listing Liu); Paper 24 at 2–3 (Petitioner’s acknowledgement that Kuchibhotla and Liu were cited). In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Advanced Bionics, Paper 6 at 10. The Examiner did not substantively discuss Kuchibhotla and Liu and, therefore, factor (c) (the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference) weighs against denying institution. Furthermore, as explained below in § II.F.1, we agree, on this record, with Petitioner’s contentions as to disputed limitation 1.e and, therefore, determine that factor (f) (the extent to which additional evidence and facts presented in the petition warrant reconsideration of the asserted references or arguments) weighs against denying institution.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical or computer engineering, computer science, or the equivalent thereof, and at least two years of experience with wireless communication systems.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’247 patent and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,869,247 - PTAB · Apr 9, 2024 · IPR2023-01273 · APJ Scott B Howard · IPR · Institution
Instituted review of claims 17–24 and 26–28 on all Petition grounds; Petitioner showed a reasonable likelihood that claim 17 was obvious over Sayana and Lee-689.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“grounds 1–3 (which includes all of the challenged independent claims), we consider whether Petitioner has shown that the Office materially erred. Becton, Dickinson factor (c) focuses on the record previously developed by the Office. Advanced Bionics, Paper 6 at 10. If the record, “is not well developed or silent, then a petitioner may show the Office erred by overlooking something.” Id. However, “if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record.” Id. at 10–11.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Id. at 6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. (citing CTPG 58 (November 2019)).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Sayana’s “codebook subset restriction” information using Lee-689’s bitmap, resulting in a system in which a separate bitmap is used for each of Sayana’s codebooks (wideband and subband) to identify precoding matrices to restrict from each respective codebook, would have been obvious to a person having ordinary skill in the art. See Ex. 1003 ¶ 114; see also Ex. 1005 ¶ 85; Ex. 1007, 18:5-15. Specifically, Petitioner has sufficiently shown that a person having ordinary skill in the art would have made that modification in order to provide flexibility in the signaling of precoding matrices to UEs by specifying precoder subsets for each specific precoder codebook. See Ex. 1003 ¶114. Accordingly, based on the current record, Petitioner has sufficiently shown that the combination of Sayana and Lee-689 teaches limitation 17.a.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,136,924 - PTAB · Apr 9, 2024 · IPR2023-01272 · APJ Scott B Howard · IPR · Institution
Instituted inter partes review of claims 1–6 on all asserted grounds because the Petition showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 3 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 3 is unpatentable as obvious in view of Stewart and 3GPP-Summary 4. Claims 1, 2, and 4–6 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’486 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“comments received from stakeholders in response to a Request for Comments. Interim Fintiv Guidance 2. For example, “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Fintiv Guidance 7. Petitioner filed a Sotera-type stipulation. Ex. 1300. Specifically, Petitioner stipulates that if we institute this proceeding, “Petitioner will not pursue in Pantech Corp. v. LG Elecs. Inc., No. 5:22-cv-00113 (E.D. Tex.), the grounds of invalidity asserted in the IPR, or any other ground that was raised or could have reasonably been raised in the IPR.” Id. In view of the Sotera-type stipulation, we decline to exercise our discretion to deny institution. Interim Fintiv Guidance 7–8.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implementation of incremental redundancy for HSDPA” using a “new ‘ringbuffer’ scheme.” Ex. 1007, §§ 1, 2.4. 3GPP-Summary describes Motorola’s proposed improvement as interleaving separately systematic bits and parity bits and that the separately interleaved bits (systematic bits followed by parity bits) are then stored in a buffer. Id. § 2.4 (“The systematic bits and the parity bits from the R=1/3 mother code are interleaved separately. A transmitter buffer is defined, where the interleaved systematic bits are stored, followed by the interleaved parity bits.”). When combined with Stewart, the output of the different interleavers (which in Stewart are for the systematic bits, first parity bit stream, and the second parity bit stream (Ex. 1005, 4:14–19, 4:25–29, Fig. 4)) are buffered in a single buffer prior to transmission. See Ex. 1003 ¶¶ 175–178.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“3GPP-Summary teaches eight different redundancy versions: “Eight different initial positions are defined in the buffer, giving at maximum eight (non-self-decodable) redundancy versions.” Ex. 1007 § 2.4. The eight different redundancy versions are defined by their different initial positions. Id. 3GPP-Summary further teaches that “at transmission, bits are sequentially transmitted from the buffer, starting at the selected initial position” and that “(wrap around is used at the end of the buffer).” Id. A person having ordinary skill in the art would have understood, based on specific initial positions, that either systematic bits would have been selected the initial starting point (or redundancy version): So, a person of ordinary skill in the art would have understood that if the “starting point” is located in the area of the “transmitter buffer” that stores the “interleaved systematic bits,” systematic bits are read out from the “transmitter buffer” for transmission before the parity bits are read out. If the “starting point,” on the other hand, is located in the area of the “transmitter buffer” that stores the “interleaved parity bits,” the parity bits are read out from the “transmitter buffer,” and then reading wraps around to the systematic bits. Accordingly, 3GPP-Summary teaches reading out for transmission systematic bits followed by interleaved parity bits (i.e., selecting parity bits over systematic bits) and vice versa (reading out for transmission interleaved parity bits and wrapping out to read out interleaved systematic bits, i.e., selecting systematic bits over parity bits). Ex. 1003 ¶ 182 (citing Ex. 1007 § 2.4).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,065,486 - PTAB · Mar 8, 2024 · IPR2023-01271 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Lemay alone or with Alfke renders the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’839 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party suggests that any claim term departs from its ordinary and customary meaning, and we are aware of no evidence at this stage to suggest otherwise. And for our decision, we do not need to construe any of the terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We discuss the claim terms below in the context of the prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“limitations 1.e(i)–(ix) in view of Alfke. LG sufficiently demonstrates the motivation to combine Lemay with Alfke because Lemay specifically teaches that Alfke’s message-processing disclosures are applicable to the embodiments in Lemay. Ex. 1005, 11:33–41; Pet. 5 n.2; Ex. 1003 ¶ 57. Alfke likewise specifically teaches that its disclosures are applicable to Lemay’s user interface. Ex. 1006, 11:4–12. Pantech also argues that LG’s obviousness arguments based on Lemay are deficient because they are conclusory, provide insufficient rationale, and incorporate material by reference from Dr. Madisetti’s declaration. Prelim. Resp. 28–30. We disagree that LG’s arguments are deficient in this respect because, to the extent (if any) that Alfke is not incorporated by reference into Lemay, the motivation to combine the references appears to be set forth in the references themselves.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,283,839 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Institution
The Board instituted IPR on claims 1–16 and 19, finding a reasonable likelihood that Google would prevail on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’737 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’737 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Christopher Schmandt, Petitioner contends a person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 5 (citing Decl. ¶ 35). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner states that “[n]o terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 5–6 (citing 37 C.F.R. § 42.100(b); Phillips, 415 F.3d 1303). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to construe any claim term expressly. D.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(1) Motivation to Combine Ditzik and Tchorzewski Petitioner explains that a POSITA would have been motivated to combine Ditzik and Tchorzewski because they are in the same field of endeavor as each other and the ’737 patent, directed to improving speech and handwriting recognition accuracy, and would have done so with a reasonable expectation of success. Pet. 21–22. According to Petitioner, one of ordinary skill in the art “would look to Tchorzewski when considering ways to improve Ditzik’s system” when multiple user’s use Ditzik’s tablet, each using a specific stored user message model to improve handwriting and speech recognition. Id. at 21 (citing Ex. 1005, 3:9–48; Ex. 1007, 1:5–19, 1:30–2:22; Decl. ¶¶ 68–69). Petitioner explains that the ordinary skilled artisan would have found the user-specific speech and handwriting recognition compatible with the system disclosed in Tchorzewski, where using different user message models would have “involved combining known elements according to known speech and handwriting recognition methods to yield the predictable result of improving user specificity for accurate recognition.” Id. at 21–22 (citing Decl. ¶ 69). Petitioner’s assertion is supported by the cited evidence and not disputed by Patent Owner. At this stage, and on this record, we determine that Petitioner has cited sufficient evidence and provided sufficient articulated reasoning to explain why, at the time of the filing of the ’737 patent, one of ordinary skill would have been motivated to combine the teachings of Ditzik and Tchorzewski to meet the limitation 1[c] of claim 1 in the manner proposed by Petitioner with a reasonable expectation of success.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’405 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’405 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 22–23 (citing Ex. 1004 ¶¶ 33–37). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 23. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the 5 The present record does not include any evidence of secondary considerations of nonobviousness. testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner states that “no terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 23 (citing Ex. 1004 ¶¶ 38–42). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to conduct express claim construction for any claim term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,904,405 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Mar 6, 2024 · IPR2022-01587 · APJ James P Calve · IPR · Final written decision
Claims 1–8 and 11–18 are unpatentable as obvious under § 103 over the asserted combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review of claims 1–8 and 11–18 (the “challenged claims”) of U.S. Patent No. 10,237,282 B2 (“the ’282 patent”) (Ex. 1001). Paper 2 (“Pet.”), 1. Fortinet, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying the standard in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims on all grounds asserted in the Petition. Paper 9 (“Dec. Inst.”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“3. Motivation to Combine and Expectation of Success Petitioner asserts a skilled artisan would have combined Nagayama” slip op. at 19
Patent outcomesUS 10,237,282 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,237,282
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.