- PTAB · Feb 5, 2025 · IPR2024-00921 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–15, 17–21, and 39 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25–26 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. at 26 (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Spatial Coding Petitioner argues that “spatial coding” means “coding in the spatial domain.” Pet. 28. According to Petitioner, the specification of the ’991 patent “describes spatial coding as the coding (e.g., quantizing and entropy coding) of pixel values in the spatial domain ‘without transform,’ but without limiting it to a particular algorithm or technique.” Id. (citing Ex. 1001, 5:6–23, Fig. 4). “Patent Owner does not contest Petitioner’s construction for the sake of this [Patent Owner Preliminary Response], but reserves the right to challenge this construction in the event of institution.” Prelim. Resp. 21. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“3. “The Difference Signal” (Claims 13 and 14). Petitioner argues that claims 13 and 14 “contain a drafting error that recites ‘the difference signal,’ without antecedent basis.” Pet. 29. According to Petitioner, a person having ordinary skill in the art “would have understood ‘the difference signal’ in these claims to mean ‘a difference signal representing differences between sample values of a predicted block of data and values for an original input block’ as recited in limitation [1a] of claim 1.” Id. For purposes of its Preliminary Response, Patent Owner “agree[d] with Petitioner’s construction of ‘the difference signal’ in Claims 13 and 14.” Prelim. Resp. 24. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PTAB · Jan 14, 2025 · IPR2024-01041 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–7, 11–13, 16, 22, 23, 30–33, 35–41, 57–66, 68–72, 80, 85, 86, 90–93, 112, and 113 on all asserted grounds, finding a reasonable likelihood of success on claim 1 …
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Practice Guide (Nov. 2019) (“CTPG”)3 59. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, 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.” CTPG 59.” slip op. at 10
- 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 [claim] it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“are in the same field of network communication, directed to the same problem as the ’543 patent and propose the same solution. Pet. 33 (citing Ex. 1001, claim 1; Ex. 1004, 1:8–24; Ex. 1003 ¶¶ 128, 129; Ex. 1005 ¶¶ 7, 24). Petitioner also argues that, because of their teachings, one of ordinary skill in the art would have understood that (1) “policy rules with criteria for filtering (matching) traffic (e.g., to identify traffic for quality of service, throttling, prioritized routing, etc.) and actions to be taken upon a match, and prioritization of such rules by their traffic classification filters, were well known in the art as evidenced by Maes” and (2) “the types of rules disclosed in Maes, and their prioritization, could be used by the provisioning system of Poh for provisioning Poh’s network elements, such as Poh’s PCRF, PCEF and/or ISGW network elements, to achieve Poh’s policy objectives.” Id. at 30–31 (citing Ex. 1003 ¶¶ 122–124; Ex. 1005 ¶ 23). According to Petitioner, one of ordinary skill in the art would have been motivated to modify Poh with the rules of Maes “where each rule or group of rules includes a traffic classification filter and an action or actions to be taken” and “order the rules of Poh, as suggested by Maes, in an order that gives priority to a first rule’s traffic classification filter over a second rule’s traffic classification filter.” Pet. 31–32 (citing Ex. 1003 ¶¶ 125, 126; Ex. 1004, 11:57–67, 14:17–24; Ex. 1005 ¶ 23). Petitioner also argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification because “it is a software solution that uses known techniques— rules and logical arrangement of rules—for their intended purpose— implementing objective of policies in a network.” Pet. 30 (citing Ex. 1003 ¶¶ 120–130), 32–33 (citing Ex. 1003 ¶ 127). h) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing on its challenge that Poh alone or Poh in view of Maes teaches, suggests, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined Poh and Maes in the manner asserted with a reasonable expectation of success.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement, as demonstrated by the prior art references and description in the State of the Art below” and would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in network service plan provisioning systems of at least four years. Pet. 11–12 (citing Ex. 1003 ¶¶ 45, 46). Patent Owner does not propose a level of ordinary skill in the art and does not challenge Petitioner’s proposal. See Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,924,543 - PTAB · Jan 14, 2025 · IPR2024-01042 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1, 8–10, 15, 21, 28, 42–47, 87–89, 96, 98, 99, 120, and 121 on all asserted grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 (2024), 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 8–10, 15, 21, 28, 42–47, 87–89, 96, 98, 99, 120, and 121 of the ’543 patent on all presented challenges. 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement, as demonstrated by the prior art references and description in the State of the Art below” and would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in network service plan provisioning systems of at least four years. Pet. 11–12 (citing Ex. 1003 ¶¶ 45, 46). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that claim terms be given their plain and ordinary meaning “because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 11. At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether Petitioner shows a reasonable likelihood of prevailing. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“g) Petitioner’s Asserted Reason for Modifying Petitioner argues that Poh and Maes are analogous art because they are in the same field of network communications, directed to the same problem as the ’543 patent, and propose the same solution. Pet. 34 (citing Ex. 1001, claim 1; Ex. 1003 ¶¶ 128, 129; Ex. 1004, 1:8–24; Ex. 1005 ¶¶ 7, 24). Petitioner also argues that, because of their teachings, one of ordinary skill in the art would have understood that (1) “policy rules with criteria for filtering (matching) traffic (e.g., to identify traffic for quality of service, throttling, prioritized routing, etc.) and actions to be taken upon a match, and prioritization of such rules by their traffic classification filters, were well known in the art as evidenced by Maes” and (2) “the types of rules disclosed in Maes, and their prioritization, could be used by the provisioning system of Poh for provisioning Poh’s network elements, such as Poh’s PCRF, PCEF and/or ISGW network elements, to achieve Poh’s policy objectives.” Id. at 31–32 (citing Ex. 1003 ¶¶ 122–124; Ex. 1005 ¶ 23). According to Petitioner, one of ordinary skill in the art would have been motivated to modify Poh with the rules of Maes “where each rule or group of rules includes a traffic classification filter and an action or actions to be taken” and “order the rules of Poh, as suggested by Maes, in an order that gives priority to a first rule’s traffic classification filter over a second rule’s traffic classification filter.” Pet. 32–33 (citing Ex. 1003 ¶¶ 125, 126; Ex. 1004, 11:57–67, 14:17–24; Ex. 1005 ¶ 23). Petitioner also argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification because “it is a software solution that uses known techniques— rules and logical arrangement of rules—for their intended purpose— implementing objective of policies in a network.” Pet. 31 (citing Ex. 1003 ¶¶ 120–130), 33–34 (citing Ex. 1003 ¶ 127). h) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,924,543 - PTAB · Jan 8, 2025 · IPR2024-00799 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–36 on all asserted grounds, finding a reasonable likelihood of success on at least one claim based on obviousness over Nguyen, Zadesky, Oda, and Gettemy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that more than one petition may be necessary “for example, 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. In such cases two petitions by a petitioner may be needed, although this should be rare.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. There is a dispute about the effective filing date of the ’602 patent (see IPR2024-00798), which requires arguments to be made under multiple prior art references. Although Patent Owner cites some non-precedential cases denying multiple petitions when there was a priority dispute (Prelim. Resp. 52), we do not find the reasoning in those cases persuasive. Instead, we find the reasoning in the cases Petitioner cites to be persuasive. See Medtronic, Inc. v. Teleflex Innovs. S.A.R.L, IPR2020-00130, Paper 20 at 11–13 (PTAB June 26, 2020); NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 at 16–18 (PTAB Oct. 26, 2020). Additionally, we do not believe that considering the two petitions will unduly burden the Board. Moreover, the arguments presented in the Petition regarding the combination of Nguyen, Zadesky, Oda, and Gettemy, based on the current record, are compelling. See Section II.F.5. Accordingly, we decline to exercise our discretion to deny institution of the Petition.8” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We also do not agree that Gettemy is substantially the same as either Oda US Pub or Hoshi. According to Patent Owner, “Gettemy, at best, teach[es] a stacked configuration of engine and battery, and art teaching a stacked configuration of engine and battery was considered and specifically distinguished during prosecution of the ’602 Patent, and are thus even further cumulative of the considered art.” Prelim. Resp. 42 (citing Ex. 2001 ¶ 136). Patent Owner argues that Oda US Pub and Hoshi also teach a “stacked configuration of battery and engine such that the input buttons are not above and adjacent the battery as well as the engine.” Prelim. Resp. 42–44. However, as discussed below in Section II.F.5.f, we do not agree with Patent Owner’s argument that Gettemy teaches a stacked battery and engine. Instead, based on the current record, we determine that Gettemy teaches that “a user input section located above the engine section and a battery” and that “the user input section is located adjacent the battery and the engine section.” Id. Because that design materially differs from Oda US Pub and Hoshi, Gettemy is not substantially the same as those references.11 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics 11 Because Gettemy is not substantially the same as a reference that was previously considered by the Office, we need not consider Patent Owner’s remaining arguments regarding other references Petitioner is relying on. framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the ultimate definition of a [person having ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11 (citing Pet. 11). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 7, 2025 · IPR2024-01043 · APJ Gregg I Anderson · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not believe the ultimate definition of a [person of ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11. Patent Owner proposes a similar description but “does not dispute Petitioner’s definition.” Id. (citing Ex. 2001 ¶ 25). At this stage, we agree that the level of ordinary skill is not at issue here. Petitioner’s undisputed definition is supported by the testimony of both experts and is consistent with the ’741 patent and the asserted prior art. Accordingly, for trial, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“distinguishes temporarily activated applications from “fully activated” applications. How a person of ordinary skill in the art would have understood “without fully activating the application” is not contradicted by Patent Owner’s arguments. The plain and ordinary meaning of the claim language does not require a change in the application, only that it is not “fully activated.” Petitioner’s understanding comports with the words of the claim. For purposes of this Decision, we find the term “without fully activating the application” included in limitation 1c is construed based on its plain and ordinary meaning, i.e., the application selected in the locked mode “cannot perform its full set of operations.”3 2. Remaining Terms We do not need to construe any remaining claim term at this time, and we apply the plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art, in the context of the ’741 patent. Any other term that may require construction should be identified and construed during trial. Failure to do so may result in forfeiture of the issue for purposes of a final decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues a person of ordinary skill in the art “would have been motivated to apply Nirhamo’s user-selection teachings with Hassan because Hassan teaches the user selecting icons to determine whether or not the associated application or operation was permitted.” Pet. 28 (citing showings for limitations 1c/11c/17c; Ex. 1003 ¶ 63). Further, Petitioner argues “[i]f the user’s selection was not highlighted in some fashion, it would have been difficult for the user to navigate the device interface (e.g., computer interface), as there would not be a clear way for the user to discern whether the correct object had been selected.” Id. (citing Ex. 1003 ¶ 63). On this record, Petitioner has shown a rationale with sufficient underpinnings to combine Hassan and Nirhamo.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,918,741 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Headwater Research LLCInstitutedPTAB · Dec 17, 2024 · IPR2024-01051 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claim 4, finding a reasonable likelihood that Rao and Jones render it obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner does not allege any particular level of ordinary skill in the art in its Petition, but Petitioner’s expert, Dr. McDaniel, testifies that a person of ordinary skill in the art, at the time of the invention of the ’811 patent, “would have been someone with (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security,” and that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 24.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Rao and Jones to arrive at the invention of dependent claim 4 (which includes the features of independent claim 1) and would have had a reasonable expectation of success in doing so. Pet. 32–38; see, e.g., id. at 35 (“[The skilled artisan] would have been motivated to combine the teachings of Rao and Jones to operate in instances where bandwidth is limited and there is contention among applications for bandwidth.”); Ex. 1003 ¶ 138 (Dr. McDaniel testifying that combining the teachings of Rao and Jones “would have required only routine programming knowledge well within the skill of [the skilled artisan].”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 32–38 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Rao and Jones to arrive at the invention of claim 4, and to do so with a reasonable expectation of success. d) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Rao and Jones with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 4 would have been unpatentable as obvious over the combination of Rao and Jones. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 4–21, 31–39; Prelim. Reply 1–5), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 4 would have been unpatentable as obvious over the combination of Rao and Jones.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,639,811 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00945 · APJ Stephen E Belisle · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–24 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Prelim. Resp. 22; Ex. 2001 ¶ 67. Patent Owner argues Petitioner relies on Freund to “cure this deficiency,” but the “Petition fails to explain why [the skilled artisan] seeking to implement a Rao-based system would look to Freund’s teachings of foreground/background classifications designed to limit an employee’s ‘counterproductive Web browsing.’” Prelim. Resp. 22. According to Patent Owner and its expert, Mr. de la Iglesia, the skilled artisan “would not have been motivated to do so, because directly contrary to Rao which suggests prioritizing foreground activity over background activity, the relevant teachings of Freund restrict foreground activity relative to background activity.” Id. (citing Ex. 2001 ¶¶ 67–79); see Ex. 2001 ¶¶ 69 (“Rao favors foreground activity, and Freund favors background activity”), 70 (“In contrast [to Rao], Freund teaches the opposite—that foreground activity should be disfavored relative to background activity.”); Prelim. Resp. 23–25. Patent Owner argues the “Petition does not explain why [the skilled artisan] would have been motivated to combine these two references’ treatment of foreground/background classifications, given their opposing treatment of foreground and background activity.” Id. at 25; see id. at 25–28 (Patent Owner explaining why “none of the Petition’s motivations would have justified combining Rao’s and Freund’s contradictory teachings regarding treatment of foreground activity.” (citing Ex. 2001 ¶¶ 74–79)). In short, according to Patent Owner’s expert’s persuasive testimony, “if [the skilled artisan] were looking for ways to supplement Rao’s treatment of foreground activity, they would not have looked to teachings that explicitly disfavor foreground activities, contrary to Rao’s teachings.” Ex. 2001 ¶ 79 (cited at Prelim. Resp. 28).” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 5–6 (“For purposes of this Preliminary Response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’613 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 61), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 3 (“No terms require construction to resolve this Petition.”); Prelim. Resp. 6 (“Patent Owner agrees that no formal claim construction is necessary.”). We do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,215,613 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Dec 4, 2024 · IPR2024-00943 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 91–152, 158, and 159 on all asserted grounds, finding a reasonable likelihood that claim 91 is obvious over Rao and Fadell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have combined Fadell’s notifications with Rao’s system with a reasonable expectation of success. See Pet. 6–8; Ex. 1015 ¶¶ 317–328, 332. Specifically, a person having ordinary skill in the art would have “combined the functionality of Rao and Fadell (e.g., of Rao’s remote access client and Fadell’s resource utilization component) to apply a policy that applies a prioritization to network packets from a background activity and notifies a user when resource usage approaches a threshold.” Ex. 1015 ¶ 321; see also id. ¶¶ 318–320 (discussing the advantages of Rao and Fadell). In such a system, “when the resource usage threshold is met, network packets from the background activity would be queued and deprioritized . . . , and the user would be notified of the resource usage threshold and afforded options for how to proceed.” Id. ¶ 322. This combination “would have improved . . . Rao’s system by enabling a policy that limits (potentially unwanted or unnecessary) background activity and notifies the user when resource usage limits are reached” and “enable[] a user to selectively control when background activity is deprioritized and held in queues to avoid data usage overages.” Id. ¶ 323. Because such a combination “would have been nothing more than the simple combination of known elements to obtain predictable results,” a person having ordinary skill in the art “would have had a reasonable expectation of success in combining Rao with Fadell.” Ex. 1015 ¶ 327.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. For the purposes of this Decision, we need not expressly construe any claim terms.7 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 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541
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.