- Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution deniedPTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. 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)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,786,055 - PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (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 communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Apr 1, 2025 · IPR2024-01397 · APJ Garth D Baer · IPR · Institution
The Board denied institution of IPR challenging claims 1–19, exercising § 314(a) discretion because the priority dispute no longer justified two petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied
“of two petitions challenging the same claims of the ’918 patent. See Prelim. Resp. 22–25. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,647,918 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00129 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of success and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00422, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of unpatentability and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00421, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - PTAB · Mar 20, 2025 · IPR2024-01407 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claim 26 on the Shell and Cole §103 ground, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering these disclosures together with the cited paragraphs of Petitioner’s declaration, Petitioner sufficiently shows on the present record that one of ordinary skill in the art would have understood that, in Shell, when a user attempts a voice call, the user can cause a current data connection to disconnect, because (1) a voice-related connection request will be made, (2) the request for voice connection will be prioritized over data requests, and (3) the request will also be prioritized if it is coming from an active application rather than an application running in the background. Pet. 47; Ex. 1003 ¶ 140; Ex. 1005 ¶¶ 8, 13, 14, 57. On the preliminary record, the relied-upon portions of Shell adequately show a determination of whether an application is an active application for prioritization purposes and disconnecting a current data connection due to a user attempting to make a voice call. Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call would be a user interaction resulting in a request for a voice connection that would be prioritized over the data request of another application using the current data connection. See Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call also involves a user interacting with an application to make it an active background. See Ex. 1003 ¶ 140. Petitioner, thus, sufficiently shows for institution that Shell’s processor is “configured to determine that the different application is an active application based on a user interaction with the different application,” as required by claim 26. Pet. 47; Ex. 1003 ¶ 140.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“One of ordinary skill in the art, Petitioner argues, would have, thus, been motivated to look to references, such as Cole, that provided mobile devices with network access while addressing cost, power, and network selection. Pet. 13–14 (citing Ex. 1003 ¶ 68; Ex. 1006, code (57), ¶¶ 14–15, 78, 83, 88, 98). Petitioner also argues that Cole describes Internet access control techniques based on conditions, such as power state change and load on current communication links, and that applying Cole to Shell would have “promoted more efficient communications and network access connectivity.” Id. at 14 (citing Ex. 1003 ¶ 68; Ex. 1006 ¶¶ 83, 98). Using Cole’s techniques, the proposed combination, Petitioner explains, would have evaluated network and power conditions, determined whether to apply an Internet access control, evaluated further conditions, such as whether the application is running in the foreground or background, and then determined the priority of packets traveling over the selected network. Pet. 14 (citing Ex. 1003 ¶ 68; Ex. 1005 ¶ 92; Ex. 1006 ¶¶ 11, 78, 83, 88, 98). Petitioner also argues that one of ordinary skill in the art would have incorporated Cole’s communication manager 260 into Shell’s connection manager modules 210 and would have incorporated Cole’s connections.” Id. at 14–15 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶ 32, Fig. 1; Ex. 1006 ¶ 31). Petitioner further argues that the proposed combination would have included the processors, non-transitory memory, and display, as taught by both references, to perform the recited operations. Id. at 15 (citing Ex. 1003 ¶¶ 71–72; Ex. 1005 ¶¶ 38–44, Fig. 1; Ex. 1006 ¶¶ 34, 40, Fig. 2). Petitioner additionally argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because it “would have required only routine programming knowledge well within [ordinary] skill,” “would have amounted to nothing more than the use of a known technique to improve similar devices . . . in a similar way,” and would have been “combining prior art elements according to known methods to yield predictable results.” Pet. 15–16 (citing Ex. 1003 ¶¶ 73, 74; Ex. 1005 ¶¶ 36, 40; Ex. 1006 ¶¶ 34, 35, Fig. 2).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s declarant opines that a person of ordinary skill in the art “would have had (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 services and application implementation in communication networks.” Ex. 1003 ¶ 15. The declarant also opines that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. “For purposes of [its] Preliminary Response, Patent Owner does not challenge that definition.” Prelim. Resp. 5 (citing Pet. 13 n.2; Ex. 1003 ¶ 15); see also Ex. 2010 ¶ 27 (stating “[f]or purposes of . . . my analysis, I do not disagree with this proposed level of skill in the art”). Based on the” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,179,359 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 17, 2025 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–3, 5–8, and 10–17 are unpatentable as obvious over Imai and Higashi, with Grzesik or Pacala for dependent claims; remaining grounds were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design. Pet. 3 (citing Ex. 1003 ¶¶ 72–77). Patent Owner argues that a POSITA would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, with, at a minimum, at least one year of work experience was with LIDAR designs, where less work experience may be compensated by a higher level of education or vice versa. PO Resp. 4 (citing Ex. 2009 ¶ 60). We agree with and will apply Patent Owner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’381 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The term “coincident with” as used in the ’381 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’381 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:61–4:5. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We begin with the language of the claims. The claims merely require that the “plurality of pixels are arranged in a second arrangement, proportional to the first arrangement.” Ex. 1001, 17:30–31. There are no other specific requirements about “first arrangement” or the “second arrangement” and no specific requirement about what kind of “proportional[ity]” is required. Thus, the language of the claims does not provide a basis for Patent Owner’s narrow reading, nor does it necessarily preclude it.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner identifies multiple reasons to make this combination. First, with respect to Higashi’s bandpass filter, Petitioner argues that “a POSITA would have been prompted to implement Imai’s system to include a bandpass filter for the received light (as suggested by Higashi) so as to advantageously pass through only light of the operational wavelength of the corresponding laser emitter and ‘eliminate the effect of background light.’” Id. at 60 (citing Ex. 1011 ¶ 86; Ex. 1003 ¶ 256). Petitioner contends that “the resulting combination would advantageously filter out interfering light sources along the optical path of each of the detector pixels, thereby improving accuracy, improving the signal-to-noise ratio, and reducing the likelihood of false detections at the detector pixel.” Id. at 61. Second, Petitioner argues that “a POSITA would have been motivated to arrange multiple SPADs in each of Imai’s detector pixels (e.g., pixels 1- 16 in Imai’s FIG. 11) so that “erroneous detection of pixels[] can be reduced” and improved accuracy is achieved.” Id. (citing Ex. 1011 ¶ 71–72; Ex. 1003 ¶ 257; Ex. 1009 ¶ 48). Third, Petitioner contends that using Higashi’s multi-SPADs in Imai’s detector pixels would have led to uninterrupted performance when an individual diode is quenched, and would have furthered Imai’s objective of “inhibiting the increase of detection obtaining time” because multi-SPADs facilitate high speed data processing as they can take turns to receive the incoming photons. Id. (Ex. 1009 ¶¶ 6–7; Ex. 1011 ¶¶ 71, 72; Ex. 1027 ¶¶ 3– 4; Ex. 1003 ¶ 258). Fourth, Petitioner asserts that the combination “was simply the” slip op. at 45
Patent outcomesUS 11,178,381 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,178,381 - PTAB · Mar 13, 2025 · IPR2024-01337 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–30 on all presented grounds after finding a reasonable likelihood that the Jobs, Jones, and Rao combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security.” Ex. 1003 ¶ 24. The declarant also opines that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Id. As noted above, Patent Owner has not yet responded. Based on the record at this stage, we preliminarily adopt the level of ordinary skill provided by Petitioner’s declarant 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 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“several “means for” performing functions without reciting structure and, thus, those limitations should be construed under 35 U.S.C. § 112, ¶ 6. Pet. 3 (citing Ex. 1001, 165:20–38). Petitioner also contends that the ’110 patent describes a device with a processor, service processor 115 being implemented on the processor, and the implementation being accomplished (citing Ex. 1001, 26:43–37:2, Figs. 9–15). According to Petitioner, “[s]ince the service processor is implemented on the processor, the corresponding structure for each of the ‘means for’ elements is a processor configured to perform respective algorithm steps for the recited function corresponding to each element.” Id. at 5 (citing Ex. 1003 ¶ 52). Petitioner specifically asserts with citations to the record the functions and corresponding structures for each of the “means for” limitations. Pet. 5– 11. After reviewing Petitioner’s arguments and evidence, we adopt Petitioner’s proposed interpretations. In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55). Regarding “means for identifying that the wireless device is connected to the first wireless network,” we preliminarily agree that the function is “identifying that the wireless device is connected to the first wireless network” and “the corresponding structure includes a processor configured to perform the algorithm steps of recognizing the type of network to which the device is currently connecting, e.g., by looking up the 51:4–13; Ex. 1003 ¶¶ 56–59). Regarding “means for identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity,” we preliminarily agree that the function is “identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity” and “the corresponding structure includes a processor configured to perform the algorithm steps of implementing traffic inspection points between the applications and the networking stack application interface using a T-buffer at socket connections and feeding the side traffic into a traffic flow analyzer.” Pet. 8–9 (citing Ex. 1001, 29:10–32, 53:51–55, 53:58–63, Fig. 16; Ex. 1003 ¶¶ 60–64). Regarding “means for applying the first service policy,” we preliminarily agree that the function is “applying the first service policy” and “the corresponding structure includes a processor configured to perform the algorithm steps of performing a service control that reduces traffic speed for all applications and traffic types successively until the service usage projections are within service usage limits for the present service billing period.” Pet. 9–11 (citing Ex. 1001, 43:38–49:1, Fig. 16; Ex. 1003 ¶¶ 65– 68).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,588,110 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 13, 2025 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Final written decision
Claims 21 and 23–34 are unpatentable as obvious over Pacala and Droz, or Pacala, Droz, and Villenueve; the Board did not reach the Hall-based grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
- Skill levelSkill level patent owner adoptedDecided for patent owner
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 11,175,405 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,405 - Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentablePTAB · Mar 13, 2025 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 44–48 and 50 are unpatentable as obvious over Imai, Higashi, and Grzesik; the Board did not reach the other grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In determining the skill level, the Board may consider various factors including the “type of problems encountered in the prior 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.” Id. “In a given case, every factor may not be present, and one or more factors may predominate.” Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In relation to Grounds 1A to 1D, Petitioner and Patent Owner dispute whether the claimed “stop region” can encompass a partially transparent material as disclosed by Retterath. PO Resp. 21; Pet. Reply 7–8; PO Sur-Reply 10. Because we do not reach Grounds 1A to 1D in this decision (see § III.D, infra), we need not and do not decide whether a “stop region” may include a partially transparent material. See Realtime, 912 F.3d at 1375, supra.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The term “coincident with” as used in the ’750 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’750 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:51–63. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends that multiple reasons would have prompted a POSITA to combine Grzesik’s cross talk absorption layer (corresponding to the claimed “aperture layer”) in the Imai-Higashi combination. Pet. 51–53. First, Petitioner contends that implementing Grzesik’s absorption layer in the Imai-Higashi combination would reduce cross talk consistent with Imai’s objective of improving resolution by allowing for more pixels to be used in a specified detection area. Id. at 51–52 (citing Ex. 1012, 4:65–5:6, 5:11–32; Ex. 1009 ¶¶ 6–7; Ex. 1003 ¶¶ 212–213). Second, Petitioner asserts that the combination would have been prompted as “the application of known techniques (Grzesik’s suggested improvement for a cross talk absorption layer to reduce secondary detection) to a known system (the primary Imai LiDAR system) ready for improvement to yield predictable results (benefits articulated above).” Id. at 52 (citing KSR, 550 U.S. at 417). Petitioner asserts that “a POSITA would have had a reasonable expectation of success at adapting Grzesik’s cross talk absorption layer to the scanning laser radar of the Imai-Higashi combination.” Pet. 52 (citing Ex. 1003 ¶ 214). Specifically, Petitioner contends that “Grzesik demonstrates the known benefits of implementing a cross talk absorption layer disposed on the detector array, with apertures of the cross talk absorption layer aligned with individual detectors, and describes using its cross talk absorption layer on Geiger-mode APDs (e.g., SPADs) as used by the Imai-Higashi combination.” Id. at 52–53 (citing Ex. 1003 ¶ 214). Patent Owner does not dispute Petitioner’s contentions concerning the motivation to combine Imai, Higashi, and Grzesik, or the reasonable expectation of success a POSITA would have had in making the combination. Petitioner shows by a preponderance of the evidence that a POSITA would have been motivated to combine Imai, Higashi, and Grzesik with a reasonable expectation of success.” slip op. at 39
Patent outcomesUS 11,190,750 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,190,750
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.