- Commscope, Inc. v. TQ Delta, LLCInstitutedPTAB · Nov 28, 2022 · IPR2022-01012 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–28 on both asserted § 103 grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Patent Owner does not assert that inclusion of Nokia as a real party interest would have barred the Petition under 35 U.S.C. § 315(b). See id. at 15–19. Therefore, it is unnecessary for us to determine whether Nokia is a real party in interest for purposes of deciding whether to institute an inter partes review. See SharkNinja Operating LLC v. iRobot Corp., IPR2020- 00734, Paper 11 at 18−20 (PTAB Oct. 6, 2020) (precedential) (no real party in interest analysis is necessary at institution absent allegation of time bar or estoppel based on unnamed RPI). Accordingly, at this stage of the proceeding, we do not consider whether Nokia should have been named as a real party in interest.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),6 which states, among other things, that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum 3. On July 7, 2022, Petitioner submitted in the Texas litigation “Defendants’ Stipulation Regarding Invalidity Contentions,” which states that “Defendants hereby stipulate that if the Board institutes IPR in . . . IPR2022-01012, they will not pursue in this case the specific grounds identified . . . in connection with the referenced patent(s) [including the ’809 patent] and claim(s) as originally issued on the instituted IPR petition(s), or any other ground for a given patent for which the Board institutes that was raised or reasonably could have been raised in an IPR.” Ex. 1035, 3. Therefore, we decline to exercise our discretion to deny institution in this proceeding under Fintiv in accordance with the Memorandum.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d), the Board uses a two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. See generally Prelim. Resp. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,833,809 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 6, 2022 · IPR2022-00557 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 based on obviousness over Foti and the listed RFCs, Wright, and Lloyd.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’669 Patent. Accordingly, we institute an inter partes review of claims 1–3, 6, 8, 10–12, 21, 22, 24, and 25 of the ’669 Patent on the ground of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d) are considered in the evaluation of whether the same or substantially the same art or arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 10. Becton, Dickinson identifies these three factors as (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; and (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art. Becton, Dickinson, Paper 8 at 17–18.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, on the present record, we determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success from that combination. As discussed above, we are persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. We are not persuaded by Patent Owner’s argument. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, which Patent Owner has not pointed out, but accepting that Patent Owner has no burden of persuasion, we determine that the motivation proffered by the Petition is sufficient for institution.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot reached
“Petition, we must also consider any objective evidence of nonobviousness put forward by the parties. Petitioner acknowledges, and Patent Owner emphasizes, that Patent Owner submitted an European Telecommunications Standards Institute (ETSI) Telecommunications and Internet Converged Services and Protocols for Advanced Networking (TISPAN) Change Request related to the embodiments recited in the ’669 Patent. Ex. 2008, 5; Prelim. Resp. 1–2. Patent Owner further asserts that the standards agency adopted it and that adoption is industry praise and supports the nonobviousness of the challenged claims. Prelim. Resp. 6–7, 65 (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1334 (Fed. Cir. 2016)). Patent Owner also asserts that Petitioner’s expert in the District Court Case, Dr. Jeffay, admitted that the Change Request was “related to the invention claimed in the ’669 Patent,” and thus has nexus to the challenged claims, being reasonably commensurate with the scope of the challenged claims. Id. at 65 (quoting Ex. 2008, 5). On this record, however, we cannot verify the nexus to the challenged claims merely through the testimony of Petitioner’s expert in the District Court Case. That expert testified: “I also understand that KPN and TNO submitted an ETSI TISPAN Change Request related to the invention claimed in the ’669 Patent in January 2009.” Ex. 2008, 5 (emphasis added). Although the expert’s testimony is evidence, it is only weak evidence, as it is not supported by any underlying documentation, such as the Change Request itself or a comparison of that Change Request and the issued claims of the ’669 Patent. As such, we remain open to further consideration of this evidence of nonobviousness through industry praise, but determine it to be insufficient to overcome the case for obviousness of the challenged claims provided in the Petition at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,667,669 - PTAB · Sep 27, 2022 · IPR2022-00666 · APJ Robert J Weinschenk · IPR · Institution
Instituted review of claims 1–4 on all grounds, finding a reasonable likelihood of prevailing on obviousness over Mazzoni and VDSL1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’048 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’048 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner’s assertion that claims 1–4 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 44–46, 52–55. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Sections II.E.1, II.E.3. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’048 patent in February 2014. Prelim. Resp. 12; Ex. 2001, 34–35; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 79. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.1 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’048 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards.2 Reply 2; Ex. 1037, 39; Ex. 1038, 1–8; Ex. 1039, 1–8; Ex. 1040 ¶ 3. Although Patent Owner has not filed a complaint against Petitioner for infringement of the ’048 patent, Patent Owner did file a complaint against Petitioner for infringement of another patent that includes similar claims. Ex. 1026, 5 (“asserts infringement of . . . United States Patent Nos. . . . 7,844,882”); Ex. 2031, 5 (“Family 3 Patents”); compare Ex. 1001, 10:41–65, with IPR2022-00664, Ex. 1001, 11:39–12:12. Further, 2 Petitioner argued in a related district court case that Patent Owner’s communications do not provide a specific charge of infringement by a specific product that constitute actual notice under 35 U.S.C. § 287. Sur-reply 3; Ex. 2032, 11. Here, we rely on Patent Owner’s communications only as evidence that Petitioner had its own interest in filing the Petition, not that those communications provided sufficient notice under § 287. there is evidence that Patent Owner continues to demand that Petitioner “take a license to its entire portfolio,” including the ’048 patent. Reply 2–3 (emphasis omitted); Ex. 1040 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,276,048 - PTAB · Sep 27, 2022 · IPR2022-00664 · APJ Lynne E Pettigrew · IPR · Institution
Instituted IPR of claims 9–16 on both asserted obviousness grounds; the Mazzoni and VDSL1 combination presented a compelling challenge, and the second ground was also instituted.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“A. 35 U.S.C. § 315(b) Patent Owner argues that we should deny the Petition under 35 U.S.C. § 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’882 patent in February 2014. Prelim. Resp. 11–12; Ex. 2001, 33–34; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 83. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.5 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner argues that Petitioner filed the Petition at the behest of 2Wire and CommScope. Prelim. Resp. 26. Specifically, Patent Owner contends that Petitioner and CommScope are “‘featured partner[s]’ in business” who agreed to a “joint strategy.” Id. at 27; Sur-reply 3–4. According to Patent Owner, Petitioner filed petitions challenging certain patents that 2Wire and CommScope are “unquestionably time barred from challenging,” even though Petitioner is not accused of infringing them. Prelim. Resp. 25–27; Sur-reply 2–3. And, in “exchange,” CommScope filed petitions challenging certain other patents that Petitioner is accused of infringing. Prelim. Resp. 26–27; Sur-reply 3. Patent Owner also contends that Petitioner and CommScope used the same declarants to support their respective petitions. Prelim. Resp. 27; Sur-reply 4. On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’882 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards. Reply 2; Ex. 1034, 38–39; Ex. 1035, 1–8; Ex. 1036, 1–8; Ex. 1037 ¶ 3. Thereafter, on August 13, 2021, Patent Owner filed a complaint in the Eastern District of Texas accusing Petitioner of infringing several patents, including the ’882 patent. Ex. 1026, 5; see Reply 2–3. Further, there is evidence that Patent Owner “continues to “take a license to its entire portfolio,” including the ’882 patent. Reply 3 (emphasis omitted); Ex. 1037 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to deny institution in light of parallel district court litigation. Prelim. Resp. 28–39; Sur-reply 7–8. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ litigation_memo_20220621_.pdf. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner’s assertion that claims 9–16 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 43–45, 51–54. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Section III.F. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Summary For the foregoing reasons, Petitioner makes a sufficient showing that the combination of Mazzoni and VDSL1 teaches or suggests all the limitations of claims 9–16 and that a person of ordinary skill in the art would have combined the references in the manner asserted. Accordingly, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that claims 9–16 are unpatentable as obvious over the combined teachings of Mazzoni and VDSL1.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,844,882 - PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner
“Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,462,835 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Sonrai Memory LimitedInstitutedPTAB · Jul 26, 2022 · IPR2022-00305 · APJ Michael T Cygan · IPR · Institution
The Board instituted review of claims 1, 3–6, 8, 10–14, 16, 19–21, 25–28, 39, 45, 47–50, 54–58, and 60 on all asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–6, 8, 10–14, 16, 19–21, 25–28, 39, 45, 47–50, 54–58, and 60 of the ’766 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’766 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 17–18 (PTAB Dec. 20, 2019) (precedential). Such evidence may include indicia on the face of the reference, such as printed dates and stamps, evidence of indexing on a national library system website, declaration from a content owner, and evidence that a copy has been accessed by the public at the relevant time. Id. at 17–19. “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Id. at 13. We consider the evidence presented by Petitioner. Petitioner asserts that USB 2.0 is a printed publication because it is dated April 27, 2000. Pet. 19 (citing Ex. 1007, Cover). Petitioner’s declarant Mr. Ravencraft further supports this assertion, stating, “USB 2.0 was released to the public on April 27, 2000 and was available for public download on www.USB.org on the same day.” Ex. 1009 ¶¶ 3–5. Mr. Ravencraft attests that he is the President of the USB Implementers Forum (“USB-IF”), which operates the website, www.USB.org, and that he has personal knowledge, or knowledge based on review of the corporate records of USB–IF, of the USB 2.0 document and its publication through the course of his involvement with USB-IF since 2002. Id. ¶ 1. Patent Owner has not taken a position on this issue at this stage.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for petitioner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, the words of a claim generally are 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner does not propose any claim constructions. Pet. 13. Patent Owner has not presented its view on this issue at this point of the proceeding. We determine that no claim term requires explicit construction, and give the terms of the claims their ordinary and customary meaning.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation marks omitted). Further, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner relies on the statement of Dr. Baker, who attests, a person of skill in the art as of January 20, 2004 (the earliest effective filing date of the ’766 Patent) would have had at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or an equivalent technical degree, and two or more years of experience with peripheral device interconnect technologies, such as USB. Additional education would compensate for less experience, and vice-versa. Pet. 13 (citing Ex. 1003 ¶ 37). Patent Owner has not presented its view on this issue at this point of the proceeding. For purposes of this Decision, we accept Petitioner’s characterization, as it is supported by Dr. Baker and consistent with the prior art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,159,766 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Sonrai Memory LimitedInstitutedPTAB · Jul 26, 2022 · IPR2022-00306 · APJ Robert J Weinschenk · IPR · Institution
Instituted review of claims 1–3, 5–7, 9, 11–15, 17, 18, 20–23, and 25 on all asserted grounds after finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’733 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’733 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or an equivalent technical degree, and two or more years of experience with peripheral device interconnect technologies, such as USB.” Pet. 13 (citing Ex. 1003 ¶ 37). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jacob Baker. Ex. 1003 ¶ 37. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 13. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3. Reason to Combine Petitioner argues that a person of ordinary skill in the art would have had reason to combine the cited teachings of Cohen and USB 2.0. Pet. 20– 21 (citing Ex. 1003 ¶ 64; Ex. 1005 ¶¶ 1–6). In particular, Petitioner presents evidence that “Cohen is specifically directed to a USB system,” and a person of ordinary skill in the art “would have been motivated to look to USB 2.0 to better understand implementation details of the USB system described by Cohen, as it is an industry standard with which such a system would need to comply.” Id. at 20 (citing Ex. 1003 ¶ 64; Ex. 1005 ¶¶ 1–6). Petitioner also presents evidence that a person of ordinary skill in the art “would have had a reasonable expectation of success in combining these complementary disclosures.” Id. (citing Ex. 1003 ¶ 64). At this stage of the proceeding, Petitioner shows sufficiently that it would have been obvious to combine the cited teachings of Cohen and USB 2.0.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,325,733 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · May 25, 2022 · IPR2022-00079 · APJ Russell E Cass · IPR · Institution
Instituted IPR on claims 1–5, 11, and 13–15 based on the Olofsson–Kuruvilla obviousness ground; the petition showed a reasonable likelihood of unpatentability, and Fintiv did not warrant denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s stipulation occupies an intermediate ground between the stipulations in Sotera and Sand Revolution. It is not as expansive as the stipulation in Sotera because it does not require Petitioner to relinquish all invalidity defenses that it could have raised in the IPR if the Petition is instituted. See Sotera at 13. However, it is stronger than the stipulation in Sand Revolution because it precludes Petitioner from relying in the district court on any of the same references used in the Petition, and is not limited to only the same grounds. See Sand Revolution at 11–12. For example, under a Sand Revolution-type stipulation, a Petitioner may be able to maintain some degree of overlap between the two proceedings by relying on the same primary reference in an obviousness combination in both proceedings and using on one or more different secondary references in each proceeding. According to the stipulation made by Petitioner in this case, however, Petitioner cannot rely on any of the references relied on in the Petition in the district court litigation. We agree with Petitioner and with our prior decision in VMWare v. Intellectual Ventures I that Petitioner’s stipulation here “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Prelim. Reply 4; VMWare at 20.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to combine Olofsson and Kuruvilla. Prelim. Resp. 26–46. Based on the present record, we determine that Petitioner has presented sufficient evidence, including testimony from Dr. Kotzin, to show a reasonable likelihood that one of ordinary skill would have been motivated to combine Olofsson and Kuruvilla as Petitioner proposes.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the present record, we agree with Patent Owner that the plain language of claim 1 expressly requires the “information collector” to perform the four actions identified by Petitioner. Ex. 1001, 11:53–66. We also preliminarily agree with Patent Owner that the claims recite an “information collector” that is distinct from the “terminals.” Id. at 11:49–50 (reciting “a plurality of terminals”), 11:51 (reciting “an information collector”), 11:53–54 (reciting that the “information collector” is configured to “select one or more terminals”).” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means for” followed by a function, and Petitioner argues that Section 112, paragraph 6 applies to these limitations. Pet. 16–22. Petitioner also argues that claim 1 recites “that the ‘information collector’ and ‘coverage estimator’ are ‘configured to’ or ‘car[y] out operations’ to perform certain recited functionality, without reciting sufficient structure for performing those functions.” Id. at 17. Petitioner further asserts that the terms “information collector” and “coverage estimator” are nonce terms subject to Section 112, paragraph 6. Id. (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Accordingly, Petitioner argues, these limitations of claim 1 also invoke Section 112, paragraph 6. Id. Patent Owner does not address the issue of whether the “information collector” and “coverage estimator” claim elements invoke Section 112, paragraph 6. Prelim. Resp. 17–25. Based on the present record and for purposes of this Decision, we will apply Petitioner’s proposed constructions of the terms “information collector” and “coverage estimator” under Section 112, paragraph 6. Doing so is consistent with the claim construction order issued by the district court in the Texas litigation, which found that these claim elements invoke Section 112, paragraph 6. Ex. 1027, 33–35, 49. slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - Apple Inc. v. Billjco LLCInstitutedPTAB · May 23, 2022 · IPR2022-00131 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 for all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’267 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’267 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed below, on this record and at this stage of the proceeding, Petitioner presents a reasonably strong case that the challenged claims are unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). For example, Petitioner’s evidence shows that Haberman and Vanluijt teach “privilege data” and a “destination identity of the whereabouts data,” which are the only limitations that Patent Owner disputes at this stage of the proceeding. See Sections II.D.1, II.F.1. Thus, we determine that the sixth Fintiv factor weighs against discretionary denial of institution. 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5 (citing Ex. 1002 ¶¶ 42–43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1002 ¶¶ 42–43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“On this record, we do not adopt Patent Owner’s proposed construction. Patent Owner does not identify any intrinsic evidence to support its argument that the term “privilege data” excludes preferences. See Prelim. Resp. 8–9. And the dictionary definition cited by Patent Owner relates to the term “privileged instruction,” which is different than the term “privilege data” that appears in claims 1 and 29. Id.; Ex. 2007, 3. Further, the ’267 patent indicates that privilege data can be “[a]ny configurable privilege granted by one identity to another identity that can limit, enable, disable, delegate, or govern actions, feature(s), functionality, behavior(s), or any subset(s) thereof.” Ex. 1001, 124:15–24. Patent Owner does not explain how this description of privilege data excludes preferences. See Prelim. Resp. 8–9. Thus, on this record, we are not persuaded that the term “privilege data” should be construed to exclude preferences. No further construction of the term “privilege data” is necessary to resolve the parties’ disputes at this stage of the proceeding. See Sections II.D.1, II.F.1; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,639,267 - Apple Inc. v. Billjco LLCInstitutedPTAB · May 23, 2022 · IPR2022-00129 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR on claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48 on all petitioned grounds because Apple showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’839 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’839 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed below, on this record and at this stage of the proceeding, Petitioner presents a reasonably strong case that the challenged claims are unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). For example, Petitioner’s evidence shows that Lutnick teaches an “object containing information and instructions for presenting said information” and an “event specification including a whereabouts condition and a condition for detecting a particular user action,” which are the only limitations that Patent Owner disputes at this stage of the proceeding. See Section II.D.1. Thus, we determine that the sixth Fintiv factor weighs against discretionary denial of institution. 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5–6 (citing Ex. 1003 ¶¶ 39–40). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1003 ¶¶ 39–40. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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 proposes construing the phrase “object containing information and instructions for presenting said information” in claim 1 and a similar phrase in claim 25 to mean “a self-contained object with both the information for presentation and the instructions describing under what conditions to present that information.” Pet. 8–10. Patent Owner does not propose an express construction for any claim terms. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,566,839
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.