- Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01247 · APJ Donald E Daybell · IPR · Institution
Institution was denied: claims 1–16 lacked a reasonable likelihood of success, and the Board declined to reach claims 17–18 because reviewing only two potentially viable claims would be inefficient.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’492 Patent “had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks. More education can supplement practical experience and vice versa.” Pet. 5 (citation omitted). Patent Owner does not dispute Petitioner’s assertion. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In view of the parties’ agreement to adopt Patent Owner’s construction and the District Court’s persuasive analysis, we find that the “multi-user detector decision unit” terms in claims 1 and 10 are properly construed on the record before us to recite the functions “using decision criteria to determine a selected multi-user detector” for claim 1 and “select[ing] a multi-user detector based upon at least one threshold” for claim 10, both of which have the following corresponding structure: a MUD decision unit 220 (or, alternatively, decision logic unit 520) configured to perform one or more of the several decision algorithms (e.g., the BER/User, SINR/Symbol, Filtered SINR/Symbol, Detected Amount/Symbol, Correlation Matrix Ratio/User, Correlation Matrix Eigenvalues, Computational Complexity, Number of Bits, Number of Users, and other algorithms) disclosed at 8:12–18, 13:35–14:40, 15:3–21, 19:43– 48, 19:56–62, and 20:41–49 of the ’492 Patent.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a reasonable likelihood of success in establishing that Onggosanusi teaches or suggests these limitations. Petitioner does not rely on Egnor for these limitations. Therefore, Petitioner fails to show a reasonable likelihood of success in establishing that claims 1 and 10 would have been obvious over Onggosanusi and Egnor. Claims 2–9 and 11–16 depend from claims 1 and 10 respectively, and thus Petitioner likewise fails to show a reasonable likelihood of success that those dependent claims would have been obvious over Onggosanusi and Egnor. Therefore, we find that Petitioner fails to show a reasonable likelihood of success for Ground 1.” slip op. at 15
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). “Even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, . . . institution of review remains discretionary.” Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10 (PTAB Nov. 7, 2018) (informative) (citing SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, 815 F.3d at 1367). Where a Petition presents a reasonable likelihood of success as to only a small number of the challenged claims, the Board has the discretion to decline to institute review, because instituting a full review on all challenged claims may be an inefficient use of the Board’s limited resources. See, e.g., Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019) (informative) (denying institution where a petitioner demonstrated a reasonable likelihood of success on only two out of twenty- a petitioner demonstrated a reasonable likelihood of success on only two out of twenty claims). Of the eighteen challenged claims, we have found that Petitioner failed to establish a reasonable likelihood of success as to sixteen of those claims. This leaves a single independent claim (claim 17) and a single dependent claim (claim 18) remaining for consideration. Even were we to conclude that Petitioner had established a reasonable likelihood of success as to claims 17 and 18, this would leave at most two claims subject to a single ground upon which such a showing had been made, out of eighteen challenged claims. Based on the particular circumstances of this case, it would be inefficient for the Board to expend resources on a full review of all eighteen challenged claims, where Petitioner has failed to establish even a reasonable likelihood of success as to the vast majority of those claims. Accordingly, we need not, and do not, take any position as to Petitioner’s showing on Ground 2 but instead exercise our discretion to deny review.” slip op. at 21
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,492 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision
Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Jan 15, 2025 · IPR2024-01044 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 4, 8–23, and 27 on all asserted grounds, finding a reasonable likelihood that Jones renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’629 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 2–4 years of experience in the field of wireless communication,” and that “[e]quivalent education, work, or experience in this field could substitute for the foregoing qualifications.” Pet. 20 (citing Ex. 1005 ¶ 82). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 22. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term that we need to construe. Pet. 5–6; Prelim. Resp. 23. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“52 subcarriers are used while “the DC subcarrier and 11 subcarriers near the edges of the 20 MHZ channel are not used for data transmission” (i.e., are set to zero). Ex. 1014, 2:14–30 (explaining the long training sequence for a conventional 802.11a preamble), 6:11–15. Notably, Jones also teaches that “packet formation block 314 may insert appropriate complex values at unused . . . subcarrier locations in each group of symbols D[k],” and that “any or all of the subcarriers k may be used to transmit data, thereby increasing the data rate.” Id. at 6:15–20 (emphasis added); see also id. at 8:22–24 (teaching that an extended long training sequence “can contain more than 52 non-zero subcarriers”). At this stage, we credit Dr. Buehrer’s testimony that one of ordinary skill in the art would have been motivated to “add[] four subcarriers to 802.11a data and training fields [to] increase[] data rate throughput as taught in . . . Jones,” as this testimony is consistent with Jones’s teachings. Ex. 1005 ¶ 107. In addition, we agree with Petitioner and find that one of ordinary skill in the art extending the long training sequence would want to use the same 52 center subcarriers to maintain backwards compatibility with 802.11a. Pet. 28–29. This is supported by Jones’s teaching of having a long training sequence that “is usable in a process for determining whether the packet is an 802.11a packet or an extended-mode packet.” Ex. 1014, 8:37– 40. Moreover, Jones’s L2 example of an extended long training sequence maintains the same 52 center subcarriers as 802.11a, which also supports this finding. Id. at Fig. 4; Ex. 1005 ¶¶ 96, 113. Thus, up to 11 subcarriers unused in 802.11a could be used for an extended long training sequence. “more than 52 non-zero subcarriers” can be used for an extended long training sequence, which explicitly teaches that only a portion of the 11 subcarriers may be used. Ex. 1014, 6:15–20, 8:22–24. In light of the above teachings, we find that one of ordinary skill in the art would have found it obvious to use only the next 4 nearest to the center of these 11 unused subcarriers. Ex. 1005 ¶ 87. The remaining 7 subcarriers would remain at zero.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · Graham - PTAB · Jan 15, 2025 · IPR2024-00913 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner filed both of its petitions in the instant proceedings on the same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); 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.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 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)). On this record, we are unpersuaded by Patent Owner’s argument that Blease teaches away from using aggregated ports to form a high-capacity link because “Blease’s disclosure is clear that the focus of its multicast techniques is to reduce, not increase, the amount of multicast traffic flowing through network.” Prelim. Resp. 14. The discussion in Blease of minimizing the bandwidth does not relate to restricting the bandwidth required for a particular stream as Patent Owner seems to assert, but rather to eliminating duplicate transmissions of the same multicast stream to be delivered to multiple subscribers. See Ex. 1005, 2:39–42, 4:50–56 (“The multicast transmission techniques described herein may significantly reduce the amount of multicast traffic . . . . For example, regardless of the number of subscriber devices[] connected to the same network switch that request the same multicast stream, [the] network device[] only sends one copy of the multicast stream to the network switch.”). Therefore, aggregating ports to accommodate transmission of a single multicast stream that requires more bandwidth is a different concept that is unrelated to the discussion in Blease about minimizing bandwidth by increasing efficiency.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Jan 15, 2025 · IPR2024-00989 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim in each Petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); 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.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 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)).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Jan 7, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–37 on all asserted grounds after finding a reasonable likelihood that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’483 patent based on any ground Petitioner raised or reasonably could have raised in this Petition.” Pet. 82. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Petitioner that the record fails to show that Hattori-912 is cumulative of Krulevitch. As Petitioner correctly points out, Patent Owner does not adequately support its cumulativeness argument by comparing the disclosures of Hattori-912 and Krulevitch. See Prelim. Resp. 27. Patent Owner seems to assume that Petitioner’s mere reliance on Hattori-912 to teach similar limitations as those arguably disclosed by Krulevitch establishes the cumulative nature of the disclosures, but merely relying on new prior art to teach the same limitations as art before the Examiner, standing alone, does not establish cumulativeness of the art as a whole. See id. The situation here underscores this point, where the new prior art (Hattori-912) expressly discloses aspects of eyewear that the prior art before the Examiner (Krulevitch) does not, rendering Hattori-912 arguably more readily combinable with other eyewear prior art such as Blum-741. See Pet. 53–65. Moreover, Petitioner expressly argues that Hattori-912 discloses eyewear limitations that Krulevitch does not. See id. at 55–59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’ in which electronic components are embedded”), 64–65 (“Hattori-912 discloses that the sealed module is embedded in the eyewear frame.”). Under these circumstances, we do not view the disclosures of Hattori- 912 and Krulevitch, or the obviousness arguments they raise, as sufficiently similar to satisfy the first prong of the Advanced Bionics framework. We also decline Patent Owner’s invitation to discretionarily deny on the basis that the grounds based on Blum-741 and Hattori-912 would present a waste of resources.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 19
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 8,708,483 - PTAB · Jan 7, 2025 · IPR2024-01071 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Howell-596 and Howell-158 render claims 1 and 19 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of showing that the combination of Howell-596 and Howell-158 renders claim 1 obvious. We have also reviewed Petitioner’s arguments and evidence addressing independent claim 19. See Pet. 43–44. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that the combination of Howell-596 and Howell-158 renders claim 19 obvious.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’541 patent based on any ground Petitioner raised or reasonably could have raised in this petition.” Pet. 80–81. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”); see also id. (stating that the Fintiv Memo “is issued under the Director’s authority to issue binding agency guidance to govern the PTAB’s implementation of various statutory provisions”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 11–12 (citing Ex. 1002 ¶¶ 30–34). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’541 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 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§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,905,541 - PTAB · Jan 6, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“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.”). 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 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’355 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 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 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,613,355 - PTAB · Jan 6, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As correctly noted by Petitioner (see Prelim. Reply 1), the Guidance Memo is “binding agency guidance.” Guidance Memo at 3. “[T]the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 7. The Guidance Memo makes no exception for parallel litigation in which expert reports have been exchanged or litigation with a third party involving the challenged patent. Nor has Patent Owner identified any instance in which the Board has determined there to be such exceptions to the Director’s guidance. Indeed, Patent Owner admits that it “is unaware of any post- [Guidance] Memo decision discretionarily denying institution in these circumstances.” Prelim. Sur-reply 1. Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 1 is anticipated by Brunton.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree.” Pet. 9 (citing Ex. 1002 ¶¶ 28–31). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 9–10 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’174 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require an express construction to resolve the challenges here.” Pet. 10. Petitioner notes that “the ’174 patent describes a number of claim terms, many in quotation marks, by what the terms refer to or may refer to” and asserts that “[t]hese descriptions in the specification are consistent with the plain and ordinary meaning of these claim terms.” Pet. 10–11 (citing Ex. 1002 ¶¶ 50–51). Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally Prelim. Resp. At this time, we determine that no express construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,801,174
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.