- Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing SAAll claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01141 · APJ Russell E Cass · IPR · Final written decision
Claims 34–40 are unpatentable as obvious over Samsung and C.S0002-0, or Samsung, Airvana, and C.S0002-0; the Board did not reach the Chung ground.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“’653 patent are not supported by Korean App. No. 6839. Claim limitation 34(d) requires that “a bit is sent on a reverse packet data control channel to indicate whether the mobile station has enough power and data to increase its data transmission rate on a reverse packet data channel,” and claim 37 recites a similar limitation. Ex. 1001, 20:19–22 (emphasis added), 20:44– 48. The ’653 patent discloses an MS_IAB bit that indicates whether the mobile station has enough power and data to increase its data transmission rate on a reverse packet data channel. Id. at 14:3–20. More specifically, the ’653 patent states that the MS_IAB value is set to “increase” when “transmission power margin (i.e., remaining transmission power) is above a certain level,” the “number of bits in the transmission buffer is above a certain level,” and “the data rate of the current transfer . . . is below a maximum data rate . . . set by the system.” Id. at 14:10–19. Thus, the ’653 patent’s disclosure of an MS_IAB supports limitation 34(d). This disclosure, however, does not appear in Korean App. No. 6839, and Patent Owner does not contend otherwise. See Pet. 8–9; Pet. Reply 3–4; Ex. 1002 ¶¶ 116–119; PO Resp. 31–46; PO Sur-reply 2–22. Nor is there any similar disclosure in Korean App. No. 6839 of a value that indicates whether the mobile station has enough power and data to increase its data transmission rate, whether referred to as an “MS_IAB” or otherwise. We also find that the RRI in Korean App. No. 6839 does not provide support for claim limitation 34(d). The relevant portion of the ’6839 application states that the base station determines “information on the increase and decrease of transmission data rate (Reverse Activity Bit, RAB) for each mobile station” and sends the RAB to the mobile station. Ex. 1011 ¶¶ 6–7. It then states that “the mobile station that has received its RAB information changes the transmission data rate one step at a time according to the RAB command and transmits it, and informs a base station of its transmission data rate through an RRI (Reverse Rate Indicator).” Id. ¶ 7 (emphasis added). The ’6839 application includes a comparable disclosure in two additional locations, paragraphs 22 and 44. Id. ¶¶ 22 (“the mobile station that has received its RAB information changes the transmission data rate one step at a time according to the RAB command and transmits it, and informs the base station of its transmission data rate through an RRI (Reverse Rate Indicator)”), 44 (same). These disclosures merely state that the RRI informs the base station of the mobile station’s transmission rate; they do not disclose that the RRI includes a bit that “indicate[s] whether the mobile station has enough power and data to increase its data transmission rate,” as the claims require.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“4. Motivation to Combine Samsung and Airvana Petitioner argues that one of ordinary skill would have been motivated to combine Samsung and Airvana because “Samsung incorporates Airvana by reference.” Pet. 39. “Specifically,” Petitioner asserts, “Samsung expressly references the disclosures of Airvana and then, importantly, makes a proposal that builds upon and improves Airvana’s ideas.” Id. Petitioner also argues that, even if Samsung and Airvana are “treated as entirely separate references,” one of ordinary skill would have been motivated to combine them because “Samsung specifically references and discusses the content of ‘Airvana’s proposal[] for 1xEV-DV’ in the context of reverse link rate control.” Pet. 40. “Moreover,” Petitioner contends, “Samsung was a contribution to the same 3GPP2 TSG working group (3GPP2 TSG-C WG5) as Airvana, so Samsung’s reference to ‘Airvana’s proposal[]’ for a dedicated control scheme for reverse link data rates could not be misunderstood.” Id. (citing Ex. 1004, 4; Ex. 1002 ¶¶ 161–163). Petitioner further argues that Samsung “states that its proposal for an increase availability bit (‘IAB’) from the mobile station ‘can be applicable for both common and dedicated control scheme[s] for reverse link data rate,” and that “Airvana proposes such a control scheme.” Id. (citing Ex. 1003, 5). Patent Owner does not argue a lack of motivation to combine Samsung and Airvana. See PO Resp. Based on the full trial record, including the testimony of Mr. Proctor, Petitioner has proven by a preponderance of the evidence that one of ordinary skill would have been motivated to combine Samsung and Airvana based on Samsung’s incorporation by reference of Airvana’s proposal, the fact that Samsung was a contribution to the same 3GPP2 TSG working group as Airvana, and Samsung’s statement that its proposal for an IAB can be applicable to a control scheme such as that proposed by Airvana. See Ex. 1002 ¶¶ 161–163; Ex. 1004, 4.” slip op. at 45
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner that C.S0002-0 teaches mapping control messages, such as power control messages having potential values of +1, -1, and 0, with the bit not being present meaning a value of 0, the bit being present and set to 1 meaning a value of -1, and the bit being present and set to 0 meaning a value of +1. Pet. 48–49; Ex. 1006, 3-8, 3-21. We also agree that this information is disclosed by Figure 3.1.3.1.1.1-4 of CS.S0002-0. Pet. 49; Ex. 1006, 3-8. Additionally, as discussed in Section II.E.5 above, we find that Petitioner has proven by a preponderance of the evidence that it would have been obvious to use C.S0002-0’s signal point mapping technique with Samsung’s (or Samsung/Airvana’s) messages with Samsung’s signaling by the base station to indicate whether the mobile station should increase, decrease, or maintain its current data transmission data rate. We disagree with Patent Owner’s contentions for the reasons discussed above in Section II.E.5. Consequently, based on the full trial record, we find that Petitioner has proven by a preponderance of the evidence that the combination of Samsung (or Samsung/Airvana) and C.S0002-0 teaches this limitation.” slip op. at 57
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Our conclusion is supported by the testimony of Mr. Proctor. Mr. Proctor testifies that “RRIs were adopted as part of prior art specifications, including for the [3GPP] cdma2000 High Rate Packet Data Air Interface at least as early as October 2000.” Ex. 1019 ¶¶ 6, 8 (citing Ex. 1018). As Mr. Proctor explains, the cdma2000 specification describes a “Reverse Rate Indicator Channel . . . used by the access terminal to indicate the data rate at which the Data Channel is transmitted.” Ex. 1019 ¶¶ 8–9 (citing Ex. 1018, 9-35). Mr. Proctor also testifies that “the Reverse Rate Indicator (RRI) symbols sent on the RRI Channel by the mobile station (access terminal) to the base station ‘indicate the data rate at which the Data Channel is transmitted.’” Id. ¶ 9 (citing Ex. 1018, 9-35). “In other words,” Mr. Proctor explains, “the mobile station sends RRI symbols to tell the base station the data rate at which the mobile is transmitting information on the reverse link’s Data Channel (the data Channel of the Reverse Traffic Channel), as the RRI Channel is used to indicate the data rate of the Data Channel being transmitted on the Reverse Traffic Channel.” Id. (citing Ex. 1018, 9-26, 9- 33, 9-34, 9-35, 9-39). Additionally, Mr. Proctor testifies that “RRIs are only briefly mentioned three times, in paragraphs 7, 22, and 48” in the ’6839 application, and “the prior art 3GPP specification has the same basic disclosure of RRIs as the ’6839 application: using the RRI to confirm to the base station what data rate the mobile station/access terminal is using.” Id. ¶¶ 7, 11 (citing Ex. 1018, 9-35; Ex. 1011 ¶¶ 7, 22, 48). “Indeed,” Mr. Proctor states, “the ’6839 application references the same data rates between 9.6 and 153.6 kbps on the reverse link that are referenced in the prior art [3GPP] specification.” Id. ¶ 11 (citing Ex. 1011 ¶ 16; Ex. 1018, 9-33, 9-35). We find this testimony to be credible because it is consistent with the disclosures of the ’6839 application and the 3GPP specification (Exhibit 1018). We also rely on and find credible Mr. Proctor’s testimony that “neither the ’6839 application nor the prior art High Rate Packet Data Specification disclose” an “RRI or other signal that comprises a bit that the mobile station sends to indicate it has sufficient power and data for a subsequent increase.” Ex. 1019 ¶ 12. As Mr. Proctor explains, “the only disclosure relating to the RRI within the ’6839 application” is the “single sentence[] referring to the RRI as informing the base station of its transmission data rate,” which is “repeated three times in separate paragraphs.” Id. (citing Ex. 1011 ¶¶ 7, 22, 48). We agree with and find credible Mr. Proctor’s testimony that this sentence “provides no additional teachings beyond what a [person of ordinary skill in the art] would have known to be conventional (e.g., beyond what was known in the current HDR system available at that time, and referenced within the ’6839 application),” id. ¶ 12, and that “[n]o person of skill in the art reviewing” this disclosure would understand it to disclose “a bit that indicates whether the mobile station has power and data to accept an increase in its data rate,” id. ¶ 13.” slip op. at 28
Patent outcomesUS 7,215,653 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,215,653 - Slack Technologies, LLC v. Ginegar LLCAdverse judgmentPTAB · Jan 9, 2023 · IPR2022-00542 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Ginegar on claims 1–16 of the ’865 patent after its request and disclaimer; those claims are cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s requests and the cited decisions and exhibit, we determine that entry of judgment against the Patent Owner with respect to claims 1 and 2 of the ’521 patent and claims 1–16 of the ’865 patent is appropriate. ORDER Accordingly, it is: ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1 and 2 of U.S. Patent No. 9,367,521 B2 and claims 1–16 of U.S. Patent No. 9,760,865 B2; FURTHER ORDERED that claims 1 and 2 of U.S. Patent No. 9,367,521 B2 and claims 1–16 of U.S. Patent No. 9,760,865 B2 are cancelled; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a) for each of the captioned proceedings.” slip op. at 2
NonePatents in suitUS 9,760,865 - Slack Technologies, LLC v. Ginegar LLCAdverse judgmentPTAB · Jan 9, 2023 · IPR2022-00541 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claims 1–2 of the ’521 patent and claims 1–16 of the ’865 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s requests and the cited decisions and exhibit, we determine that entry of judgment against the Patent Owner with respect to claims 1 and 2 of the ’521 patent and claims 1–16 of the ’865 patent is appropriate.” slip op. at 2
NonePatents in suitUS 9,367,521 - PTAB · Jan 9, 2023 · IPR2022-01106 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–6, 11, 12, 15, and 16, finding a reasonable likelihood of unpatentability on all asserted grounds and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“litigation.” Interim Fintiv Guidance at 4. “Where the information presented at the institution stage is merely sufficient to meet the statutory institution threshold, the PTAB has the authority, where warranted, to exercise discretion to deny institution in view of the other Fintiv factors.” Id. “In contrast, 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.” Id. at 4–5. As discussed below, we determine that Petitioner has shown a reasonable likelihood of unpatentability of at least independent claim 1. Beyond that, given the facts relating to the other Fintiv factors in this case, we need not determine at this time whether Petitioner’s showing is “compelling” in order to decide whether to exercise our discretion to deny institution in this proceeding. Therefore, we treat this factor as neutral in our analysis. As noted above, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv Order at 6. Weighing all of the factors, we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. Based on the record before us, we determine the facts of this case do not warrant discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes constructions for two terms: “trigger event” and “sound signature.” Prelim. Resp. 22. Patent Owner argues that “trigger event” should be construed as “an event that initiates the collection of audio content or the measurement of sound pressure level.” Id. at 23. Patent Owner argues that its construction “captures the definition provided in the specification,” which is “an event that initiates the collection of audio content or the measurement of sound pressure level that is sent to server 130 (or an associated database for storage).” Id. (citing Ex. 1001, 6:60–63). Patent Owner argues that the term “sound signature” should be construed as “a specific sound event” based on the ’259 patent specification’s statement that “[a] sound signature is a specific sound event such as a car horn, a siren, [or] a whistle.” Id. at 23–24 (citing Ex. 1001, 13:43–44). Based on the present record, we determine that it is not necessary to provide an express interpretation of the terms “trigger event” or “sound signature” for purposes of institution. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“sufficient showing as to claim 5 for purposes of institution. Specifically, we determine that Petitioner has presented sufficient evidence at this stage of the proceeding that one of ordinary skill would have been motivated to add Jones’s volume level switch for recording sounds over a given threshold in order to conserve power, and that doing so would have been within the level of ordinary skill. See Ex. 1002 ¶¶ 164–167. Although the volume level switch may have interfered with the system’s ability to detect transitory sounds, Petitioner has presented sufficient evidence that this was a tradeoff that would have been appreciated by one of ordinary skill, and would have been acceptable in certain circumstances, such as where battery life was an important consideration. Id. ¶ 168. We also disagree with Patent Owner’s assertion that “[t]he system of Couper is premised on receiving data from multiple mobile devices” (Prelim. Resp. 33), because the cited portion of Couper merely describes receiving data from many multiple devices as an embodiment, and does not indicate that Couper’s system is limited to or premised on only that embodiment. Ex. 1008, 6:11–19. Consequently, based on the present record, we determine that Petitioner has established a reasonable likelihood of unpatentability of claim 5 based on the Couper-Lemelson-Jones combination at this stage of the proceeding.” slip op. at 44
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,039,259 - Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentablePTAB · Jan 4, 2023 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Final written decision
Claims 1–18 are unpatentable; the contingent motion to amend proposing claims 19–36 is denied, and the parties’ motions to exclude are denied in part and granted in part.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleUnpatentable
“3. Analysis On the full record developed during trial, we are persuaded by Patent Owner’s argument. Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings . . . , and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances”). The claimed invention may result in multitasking on the device, but the claims are directed to downloading and installing an application in the background instead of directing the user to an application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance. We also agree with Patent Owner that the challenged claims are somewhat similar to those that the Federal Circuit held patentable in DDR Holdings. The claims there were directed to a method of generating a composite webpage that combined visual elements of a host website with content from a third-party, e.g., by combining the logo, background color, and fonts of the host website with product information from a merchant. DDR Holdings, 773 F.3d at 1248. When a user clicked on a link on the host website, the system would construct the composite web page comprising a look and feel description from the host website along with content based on product information from the merchant’s product catalog. Id. at 1250. The court held those claims were not directed at an abstract idea because they addressed the problem of retaining website visitors that, absent the claimed invention, would be instantly transported away from a host’s website after clicking on an advertisement and activating a hyperlink. Id. at 1257.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“1. Independent Claim 1 a) “A mobile device configured for running software applications, comprising:” Petitioner contends that Pasha discloses computer system 600, which” slip op. at 38
- 112 supportMotion to amend, deniedDenied
“4. Support in the Original Disclosure A motion to amend may not present substitute claims that introduce new subject matter. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he amendment seeks . . . introduce new subject matter.”). “Normally, a claim element without support in the original disclosure (i.e., the application as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of written description support.” Lectrosonics, Paper 15, 7. Accordingly, a motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim.” Id.” slip op. at 74
- ExcludeMotion to exclude, grantedGranted in part
“CTPG at 73–74. Accordingly, Rule 42.23(b) prohibits filing of new evidence other than deposition transcripts of the cross-examination of any reply witness with a sur-reply. Patent Owner does not argue that the opinions presented in paragraphs 4–13 of Dr. Mao’s declaration are within the scope of §42.23(b). See generally PO MTE Opp. Nor do we find it in the interests of justice to allow this evidence in the case file. Accordingly, we grant in part Petitioner’s Motion to Exclude paragraphs 4–13 of Exhibit 2013 pursuant to 37 C.F.R. § 42.23(b).22” slip op. at 90
Patent outcomesUS 10,782,951 unpatentable§ 101 eligibility§ 102 anticipationcites Alice · Enfish · Phillips · KSR · GrahamPatents in suitUS 10,782,951 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya, LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01099 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on all challenged claims because none of the three obviousness ground groups sufficiently showed the claimed microphone-port limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“deny institution under 35 U.S.C. § 314(a). Pet. 66–69; Prelim. Resp. 19–27; Prelim. Reply 1–5; Prelim. Sur-reply 1–3. For the reasons discussed in Sections III.E, III.F, and III.G, we deny institution on the merits of Petitioner’s challenges and as such, do not address the parties’ arguments regarding the issue of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art at the time of the alleged invention of the ’666 patent (“POSITA”), which for purposes of this proceeding is no earlier than January 22, 2007, would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing. The POSITA could have also obtained similar knowledge and experience through other means. Pet. 11 (citing Ex. 1002 ¶ 20). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 11. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’666 patent and asserted prior art of record.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In grounds 1B and 1C, Petitioner does not cite Kvaløy or Inanaga to cure the deficiencies of Platz in ground 1A. Instead, Petitioner impermissibly relies on unsupported expert testimony to supply a limitation missing from Platz. Dr. Polish’s testimony is not supported because none of the cited references or cited underlying evidence (i.e., Svean) teaches, suggests, or even mentions a port.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,244,666 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya, LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01098 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were unpatentable, failing to show that Kvaløy taught or suggested the claimed level-detection.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). For the reasons discussed below, we do not institute an inter partes review of any of the challenged claims of the ’237 paent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“D. Discretion to Deny Under 35 U.S.C. § 314(a) The parties present arguments regarding exercising our discretion to deny institution under 35 U.S.C. § 314(a). Pet. 66–69; Prelim. Resp. 30–38; Prelim. Reply 1–5; Prelim. Sur-reply 1–5. For the reasons discussed below, we deny institution on the merits of Petitioner’s challenges and as such, do not address the parties’ arguments regarding the issue of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). According to Petitioner, [a] person of ordinary skill in the art at the time of the alleged invention of the ’237 patent (“POSITA”), which for purposes of this proceeding is no earlier than April 13, 2007, would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing. The POSITA could have also obtained similar knowledge and experience through other means. Pet. 7 (citing Ex. 1002 ¶ 20). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 14. At this stage of the proceeding, we adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’237 patent and asserted prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“ordinary meaning, Petitioner does not present argument or evidence that informs us how to interpret this term. Pet. 7–8 (“Given the close correlation and substantial identity between the prior art references and the Challenged Claims, Petitioners believe that no express constructions of the claims are necessary to assess whether the prior art reads on the Challenged Claims. Thus, the claims should be given their plain and ordinary meaning.”). The record, however, does not make clear what the plain and ordinary meaning of “level-detection” is. Petitioner’s challenge does not indicate, for example, whether Petitioner considers “level-detection” a term of art, or whether Petitioner takes the position that Patent Owner acted as its own lexicographer. See generally Pet. With respect to the claimed level-detection method, the ’237 patent discloses that [i]n [an] . . . arrangement based on level detection, the processor 121 determines if either the ambient sound or internal sound exceeds a predetermined threshold, and if so, compares a Sound Pressure Level (SPL) between the ambient sound and internal sound to determine if the sound originates from the wearer’s voice. In general, the SPL at the ECM 123 is higher than the SPL at the ASM 111 if the wearer of the earpiece 100 is speaking. Accordingly, a first metric in determining whether the sound levels at both microphones. Ex. 1001, 8:28–38. Based on this disclosure, Patent Owner’s position that “level-detection” as disclosed in the ’237 patent requires “determin[ing] if either the ambient sound or internal sound exceeds a predetermined threshold” prior to “compar[ing] a Sound Pressure Level (SPL) between the ambient sound and internal sound” has merit. Prelim. Resp. 2. Kvaløy discloses that” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,217,237 - PTAB · Dec 29, 2022 · IPR2022-01078 · APJ Scott B Howard · IPR · Institution
The Board instituted review of claims 1–9 and 11–13 on all asserted grounds, finding a reasonable likelihood that claim 1 would be obvious over Pedersen, Visser, and Alves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Pedersen, Visser, and Alves. See Pet. 14–40 and 49–68. Based on the current record, we are persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 1.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“date, not the scheduled trial date. Interim Fintiv Guidance at 8–9. Because the Final Written Decision will be due approximately 2 months after the expected trial date, this factor weighs slightly in favor of exercising our discretion to deny the Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. Patent Owner agrees that the claim limitations should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” Prelim. Resp. 13. Patent Owner also points out that Petitioner advances a different claim construction in the district court proceeding. Id. at 14. For the purposes of this Decision, we need not expressly construe any claim terms at this time. 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”)7 “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The PHOSITA could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 13 (citing Pet. 13). Accordingly, for purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.8” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,057,701 - Samsung Electronics Co., Ltd. / Apple Inc. et al. v. Smart Mobile Technologies LLCInstitution deniedPTAB · Dec 5, 2022 · IPR2022-01003 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2022-01003 because the patent owner’s stipulation removed the need for a second petition and petitioner showed no exceptional circumstances.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Here, Petitioner’s Notice states that the ’083 patent should have a priority date of July 17, 2000, but Petitioner states that in the parties’ district-court litigation, Patent Owner has “reserved the right” to advanced a June 4, 1999 priority date. Notice 2–3, 5. “For these reasons,” Petitioner states that “the priority date is in sufficient dispute to justify institution of two petitions against the ’083 patent,” stating that the Petition in IPR2022- 01002 applies references that qualify as prior art to a July 17, 2000 priority date but not to a June 4, 1999 priority date, while the Petition in this proceeding applies references that qualify as prior art to the June 4, 1999 priority date. Notice 4. In response, Patent Owner states that “Petitioner[’s] basis for presenting two petitions is easily eliminated and rendered moot because Patent Owner stipulates that if the Board denies the [IPR2022]-01003 Petition, Patent Owner will not challenge that the Paulraj and Heath references qualify as prior art in the IPR2022-01002 proceeding.” Prelim. Resp. 1. In light of Patent Owner’s stipulation, Petitioner’s concern regarding the ’083 patent’s priority date does not warrant institution on two petitions. Petitioner has not otherwise shown exceptional circumstances that would warrant institution on two petitions. See Pet. 5–6 (arguing the two Petitions present only a reduced burden on Patent Owner). For the reasons explained in our Decision Granting Institution in IPR2022-01002, we preliminarily determine Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’083 patent, but we do not institute an inter partes review in this proceeding, IPR2022-01003, for the reasons set forth above. See 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“present only a reduced burden on Patent Owner). For the reasons explained in our Decision Granting Institution in IPR2022-01002, we preliminarily determine Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’083 patent, but we do not institute an inter partes review in this proceeding, IPR2022-01003, for the reasons set forth above. See 35 U.S.C. § 314(a). III. CONCLUSION We do not institute an inter partes review in this proceeding. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition in IPR2022-01003 is denied and no inter partes review is instituted in IPR2022-01003.” slip op. at 5
Discretionary denialPatents in suitUS 9,191,083 - Honeywell International, Inc. / TCT Mobile (US) Inc. et al. v. 3g Licensing S.A.No claims unpatentablePTAB · Nov 14, 2022 · IPR2021-00908 · APJ Russell E Cass · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4–7, 9–13, and 15–23 unpatentable as obvious over Philips46 alone or Philips46 and Nokia.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“A claim “shall be construed 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).” 37 C.F.R. § 42.100(b) (2020). Neither party proposes a construction of any claim terms. Pet. 29; PO Resp. 15. We determine that it is not necessary to provide an express interpretation of any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 9
- Skill levelSkill level board ownDecided for patent owner
“In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art as including a Bachelor’s degree in electrical engineering, computer engineering, or a similar discipline with approximately two years of signal processing experience, which is supported by the declaration of Dr. Clark and the prior art of record. Inst. Dec. 12 (citing Ex. 1002 ¶¶ 70–72). We also agreed with Patent Owner that a combination of more experience in the field and less education or more education and less experience in the field may also suffice. Id. In its Patent Owner Response, Patent Owner states that it does not object to the level of ordinary skill we adopted in the Institution Decision. PO Resp. 9. For purposes of this Final Written Decision, we adhere to the level of ordinary skill adopted in our Institution Decision, which is consistent with the disclosures of the ’718 patent and the asserted prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“First, we find that Petitioner has not sufficiently shown that one of ordinary skill would have been motivated to swap the last two bits in the last row of the Philips46 table in order to provide more protection to the most significant bit (MSB). Even if we were to agree with Petitioner that one of ordinary skill would have understood that swapping the last two bits would have provided more protection to the MSB, Petitioner has not sufficiently shown that one of ordinary skill would have believed that such a change would be desirable. Patent Owner introduces evidence from Dr. Smith and the ’781 patent that there was “a tradeoff between BER and RMS error” and that “efforts to minimize RMS error and to minimize BER produce conflicting and incompatible results.” Ex. 1001, 11:38–44; Ex. 2006 ¶¶ 13, 43. These conflicting results are supported by the ’718 patent specification’s comparison of various codes (represented by C1, C2, embodiment 2, and embodiment 3), which found that the embodiment that had the best BER performance (C1) had the worst RMS error performance, and the embodiment with the best RMS error performance (embodiment 3) had the worst BER performance. Ex. 1001, 11:48–51, 11:58–61. We also find credible Dr. Smith’s testimony that “[a]dding all protection to just the MSB removes protection for all other bits,” which would be expected to reduce BER performance. Ex. 2006 ¶ 16.” slip op. at 26
Patent outcomesUS 7,319,718 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,319,718
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.