- Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01247 · APJ Donald E Daybell · IPR · Institution
Institution was denied: claims 1–16 lacked a reasonable likelihood of success, and the Board declined to reach claims 17–18 because reviewing only two potentially viable claims would be inefficient.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’492 Patent “had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks. More education can supplement practical experience and vice versa.” Pet. 5 (citation omitted). Patent Owner does not dispute Petitioner’s assertion. At this juncture, we adopt Petitioner’s definition. This definition appears to be 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) (recognizing that the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In view of the parties’ agreement to adopt Patent Owner’s construction and the District Court’s persuasive analysis, we find that the “multi-user detector decision unit” terms in claims 1 and 10 are properly construed on the record before us to recite the functions “using decision criteria to determine a selected multi-user detector” for claim 1 and “select[ing] a multi-user detector based upon at least one threshold” for claim 10, both of which have the following corresponding structure: a MUD decision unit 220 (or, alternatively, decision logic unit 520) configured to perform one or more of the several decision algorithms (e.g., the BER/User, SINR/Symbol, Filtered SINR/Symbol, Detected Amount/Symbol, Correlation Matrix Ratio/User, Correlation Matrix Eigenvalues, Computational Complexity, Number of Bits, Number of Users, and other algorithms) disclosed at 8:12–18, 13:35–14:40, 15:3–21, 19:43– 48, 19:56–62, and 20:41–49 of the ’492 Patent.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a reasonable likelihood of success in establishing that Onggosanusi teaches or suggests these limitations. Petitioner does not rely on Egnor for these limitations. Therefore, Petitioner fails to show a reasonable likelihood of success in establishing that claims 1 and 10 would have been obvious over Onggosanusi and Egnor. Claims 2–9 and 11–16 depend from claims 1 and 10 respectively, and thus Petitioner likewise fails to show a reasonable likelihood of success that those dependent claims would have been obvious over Onggosanusi and Egnor. Therefore, we find that Petitioner fails to show a reasonable likelihood of success for Ground 1.” slip op. at 15
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“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.”). “Even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, . . . institution of review remains discretionary.” Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10 (PTAB Nov. 7, 2018) (informative) (citing SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, 815 F.3d at 1367). Where a Petition presents a reasonable likelihood of success as to only a small number of the challenged claims, the Board has the discretion to decline to institute review, because instituting a full review on all challenged claims may be an inefficient use of the Board’s limited resources. See, e.g., Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019) (informative) (denying institution where a petitioner demonstrated a reasonable likelihood of success on only two out of twenty- a petitioner demonstrated a reasonable likelihood of success on only two out of twenty claims). Of the eighteen challenged claims, we have found that Petitioner failed to establish a reasonable likelihood of success as to sixteen of those claims. This leaves a single independent claim (claim 17) and a single dependent claim (claim 18) remaining for consideration. Even were we to conclude that Petitioner had established a reasonable likelihood of success as to claims 17 and 18, this would leave at most two claims subject to a single ground upon which such a showing had been made, out of eighteen challenged claims. Based on the particular circumstances of this case, it would be inefficient for the Board to expend resources on a full review of all eighteen challenged claims, where Petitioner has failed to establish even a reasonable likelihood of success as to the vast majority of those claims. Accordingly, we need not, and do not, take any position as to Petitioner’s showing on Ground 2 but instead exercise our discretion to deny review.” slip op. at 21
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,492 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision
Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when 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.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when 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.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Jan 28, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–3, 5, 7–13, 15–19, and 23–25 based on the asserted grounds; the Board found a reasonable likelihood of prevailing 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 an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 . . . 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 explained below, we institute an inter partes review of the ’448 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’448 patent was filed after March 16, 2013, the effective date of the relevant amendment, the AIA versions of §§ 102 and 103 apply. communication technologies.” Pet. 5 (citing Ex. 1003 ¶ 13–15). For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner contends that “no claim elements need a formal construction for purposes of resolving controversies in this proceeding.” Pet. 5. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Zhang, in light of Zill’s suggestion, to generate wakeup packets at Zhang’s server 404 rather than at end user 406. Pet. 36 (citing Ex. 1004 ¶¶ 61, 62; Ex. 1003 ¶¶ 112–119). Petitioner contends that doing so would have allowed Zhang to accommodate more types of requesting computers, including legacy hosts that might not have the software or hardware to securely process Zhang’s query replies and generate wakeup messages. Id. at 36–37 (citing Ex. 1004 ¶¶ 61, 62, 64, 65, 77; Ex. 1005 ¶ 111; Ex. 1003 ¶ 113). Petitioner also argues that generating the wakeup messages at the server would improve security, as servers would have been able to operate better security features. Id. at 37 (citing Ex. 1004 ¶ 36; Ex. 1005 ¶¶ 40, 111; Ex. 1003 ¶¶ 114–115). Petitioner further argues that generating wakeup messages at the server would have reduced the quantity of messages exchanged containing sensitive information, reducing the risk of interception by a malicious actor. Id. at 37–38 (citing Ex. 1003 ¶ 116). Petitioner further argues that it would have been more efficient to generate the wakeup message at the server, as Zill suggests, as the server can include optimized hardware. Id. at 38 (citing Ex. 1003 ¶ 117). According to Petitioner, the combination would only require combining familiar elements according to known methods, to yield predictable results, and that a skilled artisan would have a reasonable expectation of success doing so. Id. at 38–39 (citing Ex. 1003 ¶¶ 118–119). Patent Owner does not yet contest these allegations. Upon consideration of Petitioner’s evidence, including Mr. Kardashov’s testimony, we are persuaded that Petitioner shows sufficiently that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Zhang and Zill.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Jan 28, 2025 · IPR2024-01192 · APJ Michael J Strauss · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 16 on all asserted §103 grounds, finding 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
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’916 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–10 and 16 of the ’916 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the ’916 patent “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 12–14). Patent Owner has not provided any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’916 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 9 (citing Ex. 1003, ¶¶ 43–44; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. § 42.100). Patent Owner presents no proposed claim constructions at this time. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“First, Petitioner contends, with the Kardashov Declaration providing supporting testimony, that a [person of ordinary skill in the art] would have understood that implementing [the] Lorex Manual’s system to include a conventional “network server” that facilitates hole-punching (as suggested by Kim941) would provide an improved and advantageous approach for establishing a P2P connection between the DVR and remote client device when the DVR is located behind a firewall and/or network address translator (NAT) that would otherwise prevent the remote client device from initiating a P2P connection with the DVR (e.g., due to common security policies of firewalls/NATs that block unsolicited inbound communications from devices outside of the DVR’s local network). Id. at 15 (citing Ex. 1003 ¶ 74; Ex. 1008 ¶ 18–19, 121).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,916 - PTAB · Jan 15, 2025 · IPR2024-00913 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner filed both of its petitions in the instant proceedings on the same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). On this record, we are unpersuaded by Patent Owner’s argument that Blease teaches away from using aggregated ports to form a high-capacity link because “Blease’s disclosure is clear that the focus of its multicast techniques is to reduce, not increase, the amount of multicast traffic flowing through network.” Prelim. Resp. 14. The discussion in Blease of minimizing the bandwidth does not relate to restricting the bandwidth required for a particular stream as Patent Owner seems to assert, but rather to eliminating duplicate transmissions of the same multicast stream to be delivered to multiple subscribers. See Ex. 1005, 2:39–42, 4:50–56 (“The multicast transmission techniques described herein may significantly reduce the amount of multicast traffic . . . . For example, regardless of the number of subscriber devices[] connected to the same network switch that request the same multicast stream, [the] network device[] only sends one copy of the multicast stream to the network switch.”). Therefore, aggregating ports to accommodate transmission of a single multicast stream that requires more bandwidth is a different concept that is unrelated to the discussion in Blease about minimizing bandwidth by increasing efficiency.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Jan 15, 2025 · IPR2024-00989 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim in each Petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - Cisco Systems, Inc. v. Portsmouth Network Corp.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00954 · APJ Stacey G White · IPR · Institution
The Board denied institution on claims 1–25 because Mitchell did not teach or render obvious the required failure propagation to each node and deactivation causing loss of connectivity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“the parties’ arguments, we understand Mitchell to teach the propagation of failure information from the location of the failure to the network’s edge or endpoints and that this propagation excludes nodes between the detected failure and the network’s core. Therefore, the question before us is whether one of ordinary skill in the art would have learned of the recited propagation and receipt to and from “each node of the other nodes of the plurality of network nodes traversed by the first set of links”8 from Mitchell’s downstream propagation of failure information. We are not persuaded that Petitioner’s showing is sufficient. Petitioner relies upon a circumstance where the failure occurs far upstream and uses that case to assert that Mitchell teaches the recited propagation and receipt. Claims 1 and 16, however, respectively recite the propagation to “each node” and “all nodes.” Mitchell, in contrast, does not teach propagation to each node, but rather it teaches continuing down the path to message only the remaining nodes in the path between the failure and the endpoints. It specifically and explicitly sets out to maintain connectivity with all nodes upstream of the failure. This is materially different from the claims of the ’637 patent, and Petitioner has not provided a sufficient explanation to establish that one of ordinary skill in the art would have found it obvious to extend Mitchell’s downstream-only propagation to instead” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and 16. See Prelim. Resp. 7–10. For example, claim 1 additionally recites, in relevant part, “deactivating a physical layer of the first set of links connected thereto, thereby causing a loss of connectivity in the first set of links.” Ex. 1001, 11:37–39 (limitation [1h]). Claim 16 similarly recites, in relevant part, “to deactivate the physical layer resources of each node to links in the first set of links connected to that node upon receiving the second message, to cause a loss of connectivity in the first set of links.” Id. at 12:54–58 (limitation [16g]). Thus, claims 1 and 16 both require deactivating the physical layer of nodes in order to cause a loss of connectivity in the first set of links. Petitioner asserts that Mitchell teaches that “the physical layer of the links connected downstream of these network elements are deactivated, which causes a loss of connectivity in the ‘group of links.’” Pet. 26 (emphasis omitted); see also id. at 36 (making same argument for claim 16). We are not persuaded that downstream deactivation teaches the deactivation of “each node” nor does it teach the “loss of connectivity in the first set of links.” This is true because Mitchell teaches the preservation of connectivity in upstream links. Petitioner does not argue that one of ordinary skill would have understood Mitchell to teach deactivation of the set of links, but rather Petitioner argues that there could be a circumstance where Mitchell may be unable to preserve connectivity because the failure happened at the most upstream location. This is not sufficient to teach a system that deactivates all nodes in the set of links in order to cause a loss of connectivity in the set of links because Mitchell sets out to maintain some degree of connectivity. We agree with Patent Owner that the disclosures of Mitchell would not have taught one of ordinary skill in the art the recited propagation and receipt of failure information to and by each of the nodes in the network nor would it have taught the recited deactivation to cause a loss of connectivity in the set of links. As such, Petitioner has not met its burden to demonstrate that Mitchell would have rendered independent claims 1 or 16 obvious. As to dependent claims 2–15 and 17–25, Petitioner makes no further allegations that would remedy the deficiency discussed above in regards to the independent claims. As such, Petitioner has not met its burden to show that any of claims 1–25 would have been obvious over the asserted art.” slip op. at 20
§ 103 obviousnesscites PhillipsPatents in suitUS 8,199,637 - PTAB · Dec 11, 2024 · IPR2024-00893 · APJ Peter D Shapiro · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Juniper would show at least one challenged claim obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“favor of discretionary denial, and factors 4 and 5 weigh against discretionary denial. Because we conclude that, on balance, factors 1–5 do not weigh in favor of discretionary denial, it is not necessary for us to make a determination about whether the merits are compelling. See Director’s Memo at 3–5; CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (Vidal Feb. 27, 2023) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). That being said, as discussed below in the Analysis section, we do find that Petitioner has met its burden of demonstrating a reasonable likelihood of showing that at least one of the challenged claims of the ’986 patent is unpatentable.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Based on the arguments presented in the Petition, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’986 patent challenged in the Petition. Accordingly, we institute a trial on all claims and all grounds asserted in the Petition. The Board has not made a final determination under 35 U.S.C. § 318(a) with respect to the patentability of the challenged claims. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–24 of the ’986 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 57
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(January 7, 2002), a person of ordinary skill in the art would have had: plus at least two years of industry experience or graduate-level academic experience with computer networking. Pet. 20 (citing Ex. 1003 ¶ 111). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’986 patent and the types of problems and solutions described in the ’986 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision, except that we remove the phrase “at least” to avoid unnecessary ambiguity in the level of ordinary skill in the art.7” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim: using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 20. Patent Owner applies the ordinary and customary meaning to the ’986 patent’s claim terms. Prelim. Resp. 3. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,118,602
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.