- PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00439 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not justify a second parallel petition after instituting review in IPR2024-00438.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“CTPG 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For instance, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Petitioner does not argue that the number of claims in the parallel litigation is “large.” Additionally, while Petitioner does argue that the prior art relied on might be antedated, Patent Owner responds by “stipulat[ing] that if the Board were to institute only [Petitioner’s] second ranked petition (IPR2024-00439), and deny IPR2024-00438 and IPR2024-[0]0440 as improper parallel petitions, then, in the IPR2024-00439 proceeding, Patent Owner will not challenge the status of Petrovic and Cholas as prior art.”11 Prelim. Resp. 41.” slip op. at 9
Discretionary denialPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00440 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), because the third parallel petition would add unnecessary burden after instituting the first petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. CTPG 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For instance, a second petition” slip op. at 8
Discretionary denialPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 1, 2024 · IPR2024-00437 · APJ Lynne H Browne · IPR · Institution
The Board denied institution on all asserted grounds for claims 1–82, exercising discretion because Petitioner did not justify a third parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“references describes receivers that are strikingly similar to the receiver disclosed in the ’866 Patent, yet each reference has different strengths with respect to various different claims.” Id. at 2. We do not find these arguments persuasive. Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphases added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon might be antedated, that argument only applies to the prior art relied upon in the second ranked petition (IPR2023-00436) as Patent Owner “cannot swear behind the Zhang, Pugel and Crols references.”8 Prelim. Resp. 39.” slip op. at 10
Discretionary denialPatents in suitUS 11,381,866 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Oct 1, 2024 · IPR2024-00436 · APJ Lynne H Browne · IPR · Institution
The Board denied institution on claims 1–82, exercising § 314(a) discretion because Petitioner did not justify a second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon might be antedated, Patent Owner responds by stipulating “that if the Board were to institute only Comcast’s second ranked petition (IPR2024-00436), and deny IPR2024- 00435 and IPR2024-0437 as improper parallel petitions, then, in the IPR2024-00436 proceeding, Patent Owner will not challenge the status of Petrovic and Cholas as prior art.”10 Prelim. Resp. 41. Petitioner’s remaining argument is no more persuasive. Responding to Petitioner’s argument that different prior art has different strengths with respect to different claims, Patent Owner points out that Petitioner “provides no explanation as to why the first ranked petition is not sufficient or why, if Petrovic is stronger for means-plus-function limitations, it could not have included Petrovic in the first ranked petition for the disclosure of means-plus-function limitations.” Prelim. Resp. 44. We agree. As our Practice Guide cautions, “[t]wo or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Practice Guide 59. This is especially concerning here, where the instituted trial in IPR2024-00435 will involve four references and eight grounds. Adding an additional twenty-two grounds and seven references from this Petition to the mix would create an “unnecessary burden.”” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“In sum, in the words of our Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Practice Guide 60. III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’866 patent as the petition in IPR2024-00435. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1–82 of the ’866 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 11,381,866 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects 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 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - Cox Communications, Inc. v. Entropic Communications, LLCInstitution deniedPTAB · Sep 25, 2024 · IPR2024-00579 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Cox did not show a reasonable likelihood that claims 18 and 19 were unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted unless 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.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“The proposed level of the ordinarily skilled artisan in the instant proceeding is similar to that adopted in the ’446 IPR proceeding. Here, Petitioner has not argued that the already-adopted level is wrong or explained why any differences in proposed skill levels impact the outcome of this proceeding. For purposes of this Decision, we maintain our determination to adopt the proposed level of skill in IPR2024-00446 as that skill level is reasonable and consistent with the ’775 patent specification and the prior art. Our analysis and conclusions herein, however, would be the same using Petitioner’s proposed level of the ordinarily skilled artisan in the instant proceeding.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“disclosure. In particular, Schain discloses that Figure 3, relied on by Petitioner, “illustrates the logical architecture of a dual bridge” of broadband gateway 135. Ex. 1005 ¶ 45 (emphasis added). Schain also discloses that Figure 3’s “logical architecture features two bridges, one for the broadband modem portion (a cable bridge 315) and one for the residential gateway portion (a local bridge 345) of the broadband gateway 135.” Id. (emphasis added). Schain’s disclosure is of a logical separation, that is a separation in software. See, e.g., id. at 45. Claim 18, however, recites “a data networking engine implemented in a first circuit that includes at least one processor,” “a cable modem engine implemented in a second circuit that includes at least one processor,” and limitation 18d, which is “the second circuit being separate from the first circuit.” Petitioner has not shown that Schain’s disclosure of its logical architecture teaches or suggests “the second circuit being separate from the first circuit” (emphasis added). Petitioner also relies on Schain’s disclosure of “a separate driver layer” that is “[b]eneath each bridge.” Pet. 30 (citing Ex. 1005 ¶ 46; Ex. 1003 ¶ 76). Schain discloses that “[t]he driver layer typically includes both hardware and software portions.” Ex. 1005 ¶ 31. Schain discloses that “[t]he hardware portion of the drive layer” is “the physical connection, such as Ethernet connections, USB connections, etc.” Id. Schain does not describe that the hardware portion of the driver layer includes a processor.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“engine’ is not shown as part of its line card 731.” Prelim. Resp. 51. Patent Owner argues “[t]o bridge this gap,” Petitioner “offers only a conclusory assertion that ‘it would be a trivial modification to have the DOCSIS processor 855 of line card 731 perform this function.’” Id. at 52 (citing Ex. 1003 ¶ 200). Patent Owner argues “missing limitations . . . simply cannot be added in an obviousness analysis based on a bare assertion of trivial[ity].” Id. Patent Owner argues “it is well-settled that such missing limitations cannot be supplied by conclusory statements about ‘basic knowledge’ or ‘common sense.’” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); DSS Tech. Mgmt. v. Apple Inc., 885 F.3d 1367, 1374–75 (Fed. Cir. 2018). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (2019), (“Consolidated Practice Guide” or “CTPG”) 36.3 Limitation 18i recites “the DOCSIS MAC processor configured to process downstream PDU packets and forward the processed packets directly to the data networking engine without the involvement of the DOCSIS controller in order to boost downstream throughput.” Petitioner has not shown that any asserted prior art reference teaches or suggests limitation 18i. Petitioner may not rely on the testimony of Dr. Martin to bridge this gap. After consideration of the arguments and the evidence of record, we determine that Petitioner has not shown sufficiently that limitation 18i is 3 The CTPG is at https://www.uspto.gov/TrialPracticeGuideConsolidated. taught or suggested by Perlman or Crocker and Petitioner does not rely on Fox for this limitation. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 18 is unpatentable under 35 U.S.C. § 103 as obvious over Perlman, Crocker, and Fox.” slip op. at 26
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,775 - Fervo Energy Co. v. Ormat Technologies Inc.Institution deniedPTAB · Sep 18, 2024 · IPR2024-00665 · APJ Josiah C Cocks · IPR · Institution
Institution denied because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable under the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends the following assessment in connection with a person of ordinary skill in the art: The Challenged Claims pertain to a method of recovering geothermal heat. However, “[m]any of the techniques are derived from oil and gas industry.” EX1001 at 4:23-24. Accordingly, here, a person of ordinary skill in the art (“POSITA”) is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Chemical Engineering, Petroleum Engineering, Energy Resource Engineering, or the like, or at least five years of experience engineering, drilling, and constructing wells. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could also have met the relevant standard for a POSITA. Pet. 16–17 (citing Ex. 1004 ¶¶ 34–36). Patent Owner does not offer its own assessment of a POSITA. For purpose of this Decision, we adopt Petitioner’s assessment.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“own for any claim term. Patent Owner does, however, note that “claim element 9c[13] includes the terms ‘means for,’ which are presumed to invoke 13 The referenced “claim element 9c” reads in-part “Means for producing a water density difference and a pressure difference between said first means-plus-function treatment under Section 112.” Prelim. Resp. 17 (citing Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 at 11 (PTAB Mar. 15, 2023) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part))). Patent Owner further submits that “[u]nder Rule 104(b)(3),[14] Petitioner had an obligation to provide a construction of claim element 9c that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Id. We agree with Patent Owner that the term “means for” when appearing in a claim triggers a rebuttable presumption that treatment under § 112 applies. On the record before us, however, Petitioner has not explained why the noted presumption has been rebutted or does not apply, and has not provided a construction of the pertinent “means for” term in the Petition in contradiction to the requirements of 37 C.F.R. § 104(b)(3).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“While it is certainly the case that “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art,” see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992), it is incumbent on a petitioner, in advancing a permissible theory of obviousness, to explain why a skilled artisan would recognize to pick and choose certain aspects of a reference and combine them with other aspects of the reference, particularly so where the reference itself does not suggest such combination. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests” ) (citation and inner quotes omitted). Here, Petitioner’s oscillation between different embodiments of Rinaldi in an attempt to reach the requirements of claim 1 is not adequately explained, and more closely resembles impermissible hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). In sum, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its assertion that claim 1 is unpatentable as a part of Petitioner’s proposed Ground 1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,320,221 - PTAB · Sep 6, 2024 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–4 under § 103 over Ashfary and Mirfakhraei, and claim 2 over Ashfary, Mirfakhraei, and Welles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the 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 agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. “means for determining signal activity” Petitioner contends that the claimed function of “determining signal activity” does not require further construction. Pet. 24 (citing Ex. 1001, claim 2; Ex. 1002 ¶¶ 108–109). As to the corresponding structure, Petitioner asserts that the ’518 patent describes different approaches for determining signal activity. Id. Petitioner states that one approach is to perform a Fast Fourier Transform (FFT) on data samples from an analog-to-digital converter (ADC) using the same receiver signal path that is used for data communication. Id. at 24–25 (citing Ex. 1001, 8:51–9:27, 11:7–23; Ex. 1002 ¶¶ 109–110). Petitioner contends that another approach is to measure received signal power with an envelope detector. Id. at 25 (citing Ex. 1001, 11:23–29; Ex. 1002 ¶ 110). Petitioner asserts that the envelope detector is another corresponding structure for “determining signal activity.” Id. (citing Ex. 1002 ¶ 110).” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We do not agree with Patent Owner’s argument that Mirfakhraei is not in the same field of endeavor, and therefore not analogous, to the ’518 patent. Mirfakhraei’s title, abstract, “Field of the Invention,” and claims describe its bit loading process for multicarrier communications generally, and do not limit its modems or receivers to using telephone lines as the communication medium. Ex. 1006, codes (54, 57), ¶ 1, claims 1–18. Although telephone lines are mentioned in the “Description of the Related Art” and “Detailed Description of the Preferred Embodiments” sections, Mirfakhraei cautions that “[a]lthough the invention has been described with reference to particular embodiments, the description is only an example of the invention’s application and should not be taken as a limitation.” Id. ¶ 36. Accordingly, we do not agree with Patent Owner’s argument that Mirfakhraei’s field of endeavor is limited to telephone lines or DSL, as Patent Owner argues.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 7,295,518 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted 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 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690
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.