- Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Microsoft Corporation v. Reald Spark, LLCAll claims unpatentablePTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision
Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39
Patent outcomesUS 10,740,985 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,740,985 - PTAB · Oct 3, 2024 · IPR2024-00506 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, and 14–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information 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.” See 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1, 2, 4–12, and 14–18 of the ’394 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, computer engineering, electrical engineering, or in an equivalent field, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1002 ¶¶ 62–63). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’394 patent and the types of problems and solutions described in the ’394 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 12. Patent Owner states that it applies the ordinary and customary meaning to the ’394 patent’s claim terms but does not propose any express interpretations. Prelim. Resp. 4. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted and emphasis added)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, we are persuaded that a POSITA would have been motivated to combine Weyman and Li as proposed by Petitioner. Pet. 21–25; Ex. 1002 ¶¶ 84–103; Ex. 1005 ¶¶ 4–5, 76, 98, 104–105, 119, 137–139, 162; Ex. 1007, 5:5–23, 1:17–19, 33:16–35:23. Patent Owner does not dispute that a POSITA would have been motivated to combine Weyman with Li’s channel joining processing unit. Furthermore, both references relate to similar subject matter, processing multicast stream requests, and Li’s channel joining processing unit addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005 ¶¶ 4–5 (“[A] primary object of the present invention is to provide a switching fabric, and units . . . [to] provide distributed multicast routing . . . . [and] to minimi[z]e the usage of bandwidth on links between the units of such a fabric.”); Ex. 1007, 1:17– 19 (“The present invention relates to the field of data communication, and, in particular, to a method, system, and access device for processing multicast service.”), 5:5–23 (“the maximum number of multicast channels that can be selected of a service port needs to be controlled”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). As pointed out by Petitioner, there is no apparent reason why these two concepts could not be combined together in a straightforward manner at the port level, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 21; Ex. 1002 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). Furthermore, we are also persuaded on this record that the same benefits would have existed and motivated a POSITA to combine Li’s channel joining processing unit with Weyman’s aggregated high-capacity ports. See Pet. 21; Ex. 1002 ¶¶ 93–94.” slip op. at 25
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). 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).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - Freewheel Media, Inc. v. Almondnet, Inc.InstitutedPTAB · Sep 5, 2024 · IPR2024-00413 · APJ Lynne H Browne · IPR · Institution
Instituted IPR on claims 1–7 and 9 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding based on the filing by Petitioner of two additional parallel petitions or due to the alleged lack of particularity in the instant Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“and deny institution in this proceeding (IPR2024-00413) because Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 9. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00414 and IPR2024-00415, we agree with Patent Owner that plural petitions are not warranted. Given our Decisions to Deny Institution in IPR2024-00414 and IPR2024-00415, Patent Owner’s argument is unavailing with regard to the instant Petition.” slip op. at 10
- Other 314aDenied
“We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation grounds failed. Id. at 14. In finding that the petition lacked sufficient particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the instant Petition could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not address the level of skill in the art in its Preliminary Response. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00415 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), citing the unjustified third parallel petition and the resulting burden on the proceedings.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
Discretionary denialPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00414 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), finding no justification for this second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’307 patent as the petition in IPR2024-00413. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1– 7 and 9 of the ’307 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 7,979,307 - PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - PTAB · Aug 6, 2024 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kovvali and Kalman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“on May 8, 2024 (see 35 U.S.C. § 314(b)(1)), and none of the relevant deadlines for fact discovery or expert discovery, or the date of the scheduled Markman hearing, will have passed by that date. As described by Petitioner, fact and expert discovery do not close until next year, the parties have not yet exchanged preliminary claim constructions, and the Markman hearing is not scheduled until December 4, 2024, approximately four months after our deadline for this decision. See Pet. 83. We also find that Petitioner’s diligence in filing the Petition only about a month after receiving Patent Owner’s infringement contentions, and only four months after the filing of the original complaint, supports this factor weighing more strongly against exercising our discretion to deny the Petition. See id. at 82. Accordingly, in view of the parties’ respective arguments, we find that factor 3 weighs strongly against discretionary denial. 4. Overlapping Issues with the Parallel Proceeding Under this factor, Petitioner stipulates that “[i]f the Board institutes trial, Petitioner will cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims, to the extent Petitioner even asserts the same combination in the district court.” Pet. 83. We find that this stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns for potentially conflicting decisions.” Sand at 12. More specifically, if we institute, then by stipulation the court in the Cisco litigation will not have to determine whether the challenged claims of the ’279 patent would have been obvious in view of Kovvali, Kalman, Masters, and RFC 2892, and therefore the risk of inconsistent results is also reduced. against discretionary denial because the stipulation is limited in nature.10 Prelim. Resp. 20. We agree, and therefore find this factor weighs slightly against discretionary denial. Sand at 12 n.5 (“Petitioner stipulates only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition in this case. . . . Petitioner could have stipulated that it would not pursue any grounds raised or that could have reasonable been raised in an IPR . . . . Doing so might have tipped this factor more conclusively in its favor.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision below, Petitioner relies on Kovvali alone as teaching all but two steps recited in independent claim 1, and Petitioner similarly relies on Kovvali alone as teaching all but two limitations of independent claim 15. See Pet. 26–50, 63–64. For those additional steps and limitations, Petitioner relies on combined teachings of Kovvali and Kalman. See id. at 42–47. As Petitioner points out and Patent Owner acknowledges, however, Kovvali was not previously presented to the Office during prosecution of the application for the ’279 patent. See id. at 80; Prelim. Resp. 26. Moreover, notwithstanding Patent Owner’s assertion that Drake has “similar[ities] to how Petitioner characterizes Kovvali,” Patent Owner identifies only that “Drake teaches a ‘management system for local area networks’ that features an ‘allocator,’ which determined ‘if requested facilities are available, and if so, reserves these facilities for the requesting station.’” Prelim. Resp. 26 (citing Ex. 2003, code (57)). In contrast, Petitioner’s reliance on Kovvali goes significantly beyond such high-level generalizations, providing a detailed mapping of Kovvali’s teachings to, for limitations [15.1]–[15.5] and [15.8] of independent claim 15, as well as to the additional limitations recited in each of dependent claims 2, 5, 11–14, and 18, with supporting testimony from Dr. Mir’s declaration. Pet. 27–42, 48–51, 55–56, 59–64, 67 (citing Ex. 1003 ¶¶ 62–103, 120–130, 146–150, 160–185). Notably, Patent Owner does not expressly contest Petitioner’s arguments with respect to those limitations at this stage of the proceeding. See generally Prelim. Resp. Nor does Patent Owner cite any evidence of arguments substantially the same as those presented by Petitioner having been presented during prosecution. Accordingly, on this record and after taking into account Becton, Dickinson factors (a), (b), and (d), cited by Advanced Bionics as relevant to the first part of the two-part framework set forth therein (see Advanced Bionics at 9–10), we are not persuaded that the same or substantially the same art previously was presented to the Office or that the same or substantially the same arguments previously were presented to the Office. Accordingly, we need not proceed to the second part of the framework, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of the Preliminary Response. Prelim. Resp. 3. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,035,279 - Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution deniedPTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,265,096
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.