- PTAB · Apr 25, 2024 · IPR2024-00009 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1–10 on all petition grounds, declined discretionary denial, and granted joinder with IPR2023-00724.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Director Vidal set forth in the Interim Procedure that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure, 7, 9. This guidance does not condition or otherwise qualify the effect of a Sotera stipulation on our exercise of discretion to deny the Petition based on any remaining defendants in the parallel litigation that are not subject to the stipulation. Petitioner has filed such a stipulation. Reply 2 (“Petitioners stipulate that, if instituted, they will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have reasonably been raised therein”). Therefore, we will not exercise our discretion to deny the Petition. We also find that with the change of the district court trial date to over two months after the current statutory due date for the Mylan IPR, the Mylan IPR should be completed before a trial in the district court begins. See Ex. 1098. This change in trial date, in addition to the lack of complete overlap in the claims asserted here and in the Delaware Litigation, provide further reason for us to refrain from exercising our discretion to deny the Petition under 35 U.S.C. § 314(a) regardless of remaining defendants in the Delaware Litigation that are not bound by any estoppel arising from the Mylan IPR.10” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the same reasons set forth in our institution decision in the Mylan IPR, we determine that Petitioner has shown a reasonable likelihood that at least one claim is unpatentable. Mylan IPR, Paper 10, 17–29 (PTAB Oct. 4, 2023). We therefore institute trial as to all challenged claims on all grounds stated in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 12
Discretionary denialPatents in suitUS 10,335,462 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentablePTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision
The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 5
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner
“d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32
Patent outcomesUS 11,110,087 not shown unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,110,087 - PTAB · Mar 29, 2024 · IPR2023-01439 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR on claims 1–7, 9–11, 24–26, 28, 29, 35, and 36 on all asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). Upon considering the argument and evidence presented in the Petition, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of the challenged claims of the ’803 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSITA”) would have had “a bachelor’s degree and two or more years of experience or a master’s degree in organic synthesis or chemical engineering, with education substituting for experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 15–16). We adopt Petitioner’s definition as it appears to be consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Claim Construction › Intrinsic evidence (Phillips canons) › Conventional terms ('about', 'substantially', 'a'/'an', 'configured to')Term construed petitioner constructionDecided for petitioner
“At this stage of the proceeding—and without a substantive response from Patent Owner—we determine Petitioner’s construction is consistent with the plain ordinary meaning of “about” and the intrinsic evidence. The claim recites that the carbon chain length of the bio-alkene is “about 5 to about 20 carbons atoms.” Ex. 1001, claim 1 (emphasis added). We agree with respect to the claimed range. See Cohesive Techs., Inc. v. Waters. Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (“When ‘about’ is used as part of a numeric range, the use of the word ‘about,’ avoids a strict numeric boundary to the specified parameter.”) (internal quotations omitted). In other words, the claim term “about 5 to about 20 carbon atoms” does not require precisely 5 to 20 carbon atoms. Moreover, we agree that a carbon atom in a compound is not divisible. Keeping these principles in mind, we find “about 5” at the lower end of the range encompasses a carbon chain length of 4 carbon atoms, and “about 20” at the upper end of the range encompasses a carbon chain length of 21. We also agree with Petitioner that the prosecution history of the related ’902 Application—which also claims the benefit of the ’985 Provisional and shares a virtually identical specification as the ’803 Patent— supports construing “about” to encompass one additional carbon atom, as evidenced by the amendment after allowance amending the term “carbon chain length of about 8 to about 20” to “carbon chain length of 7 to 20.” See Ex. 1006, 335 see also id. at 16, 23–63. Thus, the intrinsic evidence supports Petitioner’s construction and the plain ordinary meaning of “about.”” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,882,803 - PTAB · Mar 19, 2024 · IPR2024-00181 · APJ Timothy G Majors · IPR · Institution
The Board instituted inter partes review of claims 1–29 and granted Inari’s contingent motion to join the Bayer 1038 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1038 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1038 IPR, Paper 12. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’745 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1038 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Furthermore, a motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
- Other 314aOther
“prevailing, as it is substantively identical to the successful petition upon which we instituted the Bayer 1038 IPR. However, institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review under particular circumstances, but not requiring institution under any circumstances); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); 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.”). I would exercise that discretion here and deny the Petition. The Bayer 1038 IPR is governed by the petition filed by Bayer. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1336 (Fed. Cir. 2020) (“The already-instituted IPR to which a person may join as a party is governed by its own petition and is confined to the claims and grounds challenged in that petition.”). However, “[t]he instant Petition is substantively identical to the petition filed by Bayer, challenging the same claims of the ’745 patent on the same grounds and relying on substantively identical expert testimony.” Pet. 3. Thus, institution based on the instant Petition creates a second inter partes review that is duplicative of the Bayer 1038 IPR. As we are already granting Inari’s request to join the Bayer 1038 IPR as a petitioner, I see no benefit to granting Inari’s Petition to institute a second inter partes review. I would deny Inari’s Petition.” slip op. at 11
Discretionary denialPatents in suitUS 11,299,745 - PTAB · Mar 19, 2024 · IPR2024-00180 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR of claims 1–29 based on a reasonable likelihood of success and granted Inari’s motion to join the Bayer 1037 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1037 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1037 IPR, Paper 12. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’283 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1037 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Furthermore, a motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
NonePatents in suitUS 11,149,283 - PTAB · Mar 19, 2024 · IPR2024-00179 · APJ Timothy G Majors · IPR · Institution
The Board instituted review of claims 1–34 on all four asserted grounds and granted Inari’s motion to join the Bayer 1036 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1036 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1036 IPR, Paper 11. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’555 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1036 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
NonePatents in suitUS 10,947,555 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01293 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 as anticipated by and obvious over Wu; claims 6, 7, 12, and 17 as obvious over Wu and Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering (or equivalent field) with 2–3 years of work experience in wireless communications.” Pet. 21 (citing Ex. 1003 ¶¶ 20–22). Patent Owner argues that one of ordinary skill in the art “would have an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499
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.