- Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01362 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds after finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the 5 Holloway et al., WO 02/49322 A2, filed Dec. 11, 2001, published June 20, 2002. Ex. 1006. 6 Pitroda, US 7,308,426 B1, filed Aug. 11,1999, issued Dec. 11, 2007. Ex. 1007. cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (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 first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA) [W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states that “[n]o formal claim constructions are required in this proceeding.” Pet. 6. However, Petitioner submits “preliminary” claim constructions proposed by the parties in the District Court case, including proposed constructions for the claim terms “transceiver” and “transmitter.” Pet. 7–9. Patent Owner states that it “does not dispute the Petition’s statement on claim construction for the purposes of this Preliminary Response.” Prelim. Resp. 8. Notwithstanding the parties’ statements disavowing the need for claim construction, in our analysis set forth below we consider construction issues regarding the independent claim terms “voice call communication,” “voice call signal,” “transceiver,” and “transmitter.” We invite the parties to further consider these issues going forward.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,381,974 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,405,947 - PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Oct 21, 2024 · IPR2024-00698 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 under all six asserted § 103 grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5 of the ’767 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),7 which states, among other things, that “the 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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 25, 2024, submission, Petitioner has stated that “[Petitioner] will not pursue [in the related litigation] the same invalidity grounds raised (or any grounds that could have been raised) [in this IPR].” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). In view of this stipulation, we do not exercise discretion to deny institution.” slip op. at 12
- Parallel petitionsDecided for petitioner
“Second, we determine both petitions, at this stage, to be strong. Patent Owner has not refuted the obviousness merits of either Petition, and, at this stage, we do not independently identify a flaw in Petitioner’s analysis. Third, we agree with Petitioner that it could not have reasonably addressed both the Shahoian and Izumi theories in one petition. Petitioner’s Notice 4. At the time Petitioner filed its petitions, Petitioner was reasonably uncertain as to whether or not the term “control component” is a means-plus-function term. If means-plus-function, Petitioner was reasonable in taking extra effort to address the term. Petitioner did not have space in one Petition to address both a means-plus-function possibility while also addressing both Shahoian and Izumi theories. Fourth, granting both Petitions will not place an undue burden on Patent Owner. As Patent Owner emphasizes, only five claims are at issue. Resp. 19–20. Moreover, we indicate, in this decision, our preliminary agreement with the U.S. District Court for the Western District of Texas that “control component” should not be construed as means-plus-function. See Section III(C), supra. Based on this indication, we hope that the parties may be able to narrow the focus of this proceeding at trial. We determine that these four reasons, along with all other circumstances specific to this particular matter, cumulatively weigh against exercising discretion to deny institution for this particular matter.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00807 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 2 and 3 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “the 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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner states that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00807 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00807 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all remaining challenged claims, claims 2 and 3, and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that a person of ordinary skill in the art (POSITA), would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“For purposes of this proceeding, the parties agree that independent claim 2 includes means-plus-function limitations under 35 U.S.C. § 112 ¶ 6.9 Pet. 2–6; Prelim. Resp. 7–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the 9 As indicated above, statutory citations are to the pre-AIA version of 35 U.S.C. § 112. See supra note 1. recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; Prelim. Resp. 7–14. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,860,337 - PTAB · Sep 24, 2024 · IPR2024-00707 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We determine that we do not need to resolve this claim construction issue for purposes of institution because, as discussed further below, even if we adopt Patent Owner’s narrower construction of “center frequency,” Petitioner has demonstrated a reasonable likelihood that this limitation is disclosed by the asserted prior art. Consequently, for purposes of this decision, we will apply Patent Owner’s construction of “center frequency” as to “the carrier signal frequency the baseband signal is upconverted to.” The parties may further address the construction of this claim term during the trial. 2. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine that we do not need to resolve this claim construction issue for purposes of institution because, as discussed further below, even if we adopt Patent Owner’s narrower construction of “center frequency,” Petitioner has demonstrated a reasonable likelihood that this limitation is disclosed by the asserted prior art. Consequently, for purposes of this decision, we will apply Patent Owner’s construction of “center frequency” as to “the carrier signal frequency the baseband signal is upconverted to.” The parties may further address the construction of this claim term during the trial.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’802 patent and the asserted prior art of record.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,924,802 - PTAB · May 8, 2024 · IPR2024-00175 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–17 and all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. Patent Owner focuses on specific details of the packet classification system of Kumar, whereas Petitioner relies on the combination of Biswas and Kumar. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the 6 “Minoli Decl.” refers to the Declaration of Daniel Minoli, filed by Patent Owner in support of its Preliminary Response. Ex. 2001. features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Bhattacharjee Decl. ¶¶ 77, 97–101. Accordingly, for purposes of this Decision, we accept Partitioner’s proffered combination of Biswas and Kumar.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In regard to the reexamination proceedings that Patent Owner relies on, however, the current record presents circumstances not well suited for the Becton Dickinson factors. Here, the reexamination is in its early stages, and no office action has issued. It is premature to characterize the reexamination grounds as “previously presented,” or to evaluate whether the Office erred in a manner material to the patentability of challenged claims. See, e.g., Mueller Sys., LLC v. Rein Tech, Inc., IPR2020-00099, Paper 9, 10– 14 (PTAB May 12, 2020) (holding that §325(d) did not apply to prior art submitted in pending reexamination that had not yet resulted in an office action). Moreover, the Examiner’s determination in the January 18, 2024 grant of the reexamination request is consistent with Petitioner’s arguments here, in that it found substantial new questions of patentability with respect to both a Biswas patent asserted to be similar to the Biswas patent asserted here, and Fangman, also asserted here. Ex. 2008, 20. Therefore, there is little basis to predict that, in the further course of the reexamination proceedings, the Office will have erred in a manner material to the patentability of challenged claims. Also, the finding of substantial new questions of patentability supports a determination that the Office was not “previously” presented with the same art or arguments as in the Petition because the Examiner determined that arguably similar (the reexamination Biswas patent) and identical (the Fangman patent) references presented new questions of patentability. See Mueller, IPR2020-00100, Paper 9, 10. We note that the Office has advised that “[t]he Board . . . may deny institution under 35 U.S.C. [§] 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding.” Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16,654, 16,657 (Apr. 22, 2019). The Examiner in the reexamination proceeding at issue here has found that the art presented there is “substantially the same prior art” as Petitioner asserted in this IPR. Ex. 2008, 20. As stated above, both proceedings rely on Fangman, and the two Biswas references are similar. The early stage of the reexamination proceeding, however, weighs against denying institution. See Mueller, IPR2020-00100, Paper 9, 13. In addition, unlike this proceeding, the reexamination does not involve consideration of the teachings of Kumar, which as discussed above is critical to the question of obviousness of using a mask to define a range of port numbers. After weighing all the considerations discussed above, we determine” slip op. at 27
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Patent Owner also argues that the fact that Unified Patents submitted the reexamination request presents a real party in interest issue that is an additional reason to deny institution. Prelim. Resp. 46–48. However, the present record does not present facts that would support this argument.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,693,369 - PTAB · Dec 7, 2023 · IPR2023-00997 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claim 2 under § 103 over TS 36.300 V10.0.0 and R2-104515, § 102 over Malladi, and § 103 over Malladi and TS 25.319.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claim 2 of the ’976 patent. Accordingly, we institute an inter partes review as to claim 2 of the ’976 patent on the three asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Patent Owner asserts that no construction is needed for that phrase, pointing to the District Court’s Markman construction. Prelim. Resp. 8 (citing Ex. 2002, 14–16). The District Court determined that Petitioner’s asserted construction represented “a distinction without a difference.” Ex. 2002, 17. The District Court determined that Petitioner’s asserted construction would not provide any additional clarity as to the claim scope. Id. (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (Claim construction “is not an obligatory exercise in capture the meaning that Petitioner seeks to affix to that phrase. Accordingly, we determine that the plain and ordinary meaning of the phrase provides sufficient clarity such that further, redundant construction is unnecessary at this stage of the proceedings.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing or implementing cellular networks. Additional work or research experience can substitute for less or different education, and vice versa. A person of ordinary skill in the art would also have had familiarity with the 3GPP technical standards. Pet. 32 (citing Ex. 1003 ¶¶ 28–34) (emphasis omitted). Patent Owner submits an essentially identical description of this hypothetical person. Prelim. Resp. 8–9 (citing Ex. 2001 ¶ 22). We do not determine any 2 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. representations. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the Specification of the ’976 patent and the prior art of record.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We have considered Patent Owner’s argument, but find that Petitioner has articulated sufficient reason to combine the no-uplink teaching of R2-104515, and has sufficiently articulated the manner of such combination. Petitioner points to TS 36.300 V10.0 as presenting the situation in which uplink resources may not be provided. Pet. 59–60, 56–59 (pointing to Patent Owner’s infringement contentions as also indicating that TS 36.300 does indeed discuss a no-uplink situation). Petitioner points to language from R2-104515 that “current agreements” permit that there may be an absence of uplink resources on secondary cells, which raises a question on how to indicate that absence. Id. at 61 (citing Ex. 1013, 1). We agree with Petitioner that, by providing options to answer a question raised in TS 36.300, it would have been obvious for a person having ordinary skill in the art to combine teachings from R2-104515 to resolve that question. Patent Owner’s argument that R2-104515 addresses a situation from TS 36.331, and not from TS 36.300 fares no better. First, TS 36.300 and TS 36.331 generally address the same standard. Ex. 1012, 13. Second, as discussed above, Patent Owner’s infringement contentions support a determination that TS 36.300 contains the no-uplink scenario that is addressed by R2-104515. Third, TS 36.300 V10.0 explicitly cites 3GPP which, through reference in this text, constitute provisions of the present document.” Id. Consequently, we do not agree that the mention of TS 36.331 in R2-104515 diminishes the reason to combine the teachings of R2- 104515 with TS36.300 V10.0. e) Determination In view of the foregoing, we determine that Petitioner has sufficiently shown, for purposes of institution, that each element of claim 2 has been taught or suggested by the combined references. We also determine that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the references as suggested by Petitioner, and would have a reasonable expectation of success in doing so.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,200,976 - PTAB · Dec 4, 2023 · IPR2023-00957 · APJ Norman H Beamer · IPR · Institution
Instituted IPR on claim 3 for all petition grounds; the Board found a reasonable likelihood of success on obviousness over UMESH and R1-060583.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108 (2022). For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to the challenged claim. Accordingly, we institute an inter partes review as to the challenged claim and grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for patent owner
“However, regarding the claim 3 condition, “when a transmission of said quality notification signal coincides with that of said scheduling request signal in said transmitter,” we agree with the court’s construction in the California case: “when a transmission of said quality notification signal is scheduled to transmit or is transmitting at the same time as that of said scheduling request signal in said transmitter.” Ex. 2002, 12. The court rejected defendant’s (here Petitioner’s) equating “coincides” with “simultaneous” and relied on the statement in the ’656 patent that when the mobile terminal transmits the uplink scheduling request signal SR, the mobile terminal stops the transmission of a CQI symbol “which the mobile terminal was originally scheduled to transmit at the same timing.” Id. at 10 (citing Ex. 1001, 16:7–21) (emphasis added). As the court explained, “[t]his disclosure teaches temporarily preventing a scheduled transmission as opposed to stopping a transmission already in progress.” Id. at 11. Therefore, for purposes of this Decision, we construe “when a transmission of said quality notification signal coincides with that of said scheduling request signal in said transmitter,” to mean “when a transmission of said quality notification signal is scheduled to transmit or is transmitting at the same time as that of said scheduling request signal in said transmitter.”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103(a) requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,635,656 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Sep 7, 2023 · IPR2023-00582 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1 and 6–8 and all petition grounds, finding a reasonable likelihood of obviousness for claims 1, 6, and 8 over Amirijoo and 3GPP TR 32.816.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“With that caveat, having reviewed Petitioner’s arguments and supporting evidence in this present record, we determine the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Amirijoo and 3GPP TR 32.816.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11 (citing Mahon Decl. ¶¶ 31–37). Patent Owner does not contest Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 21–22. 2 The record does not include evidence or argument regarding objective indicia of nonobviousness. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Petitioner’s construction is presented without any consideration of the intrinsic record and is based solely on extrinsic evidence (PO’s infringement contentions). At this stage, this construction appears overly broad and we are not persuaded that it is correct. The “detected user terminals” of claim 7 are, according to claim 1, “user terminals to be transferred from the first wireless access node of the first wireless access network.” Ex. 1001, 11:57– 59 (emphasis added). Thus, the detector of claim 1 has already identified the user terminal as located somewhere within “the cell in which a terminal is operating.” To construe claim 7 as merely again ascertaining that the user terminal is somewhere within its cell appears to be a redundancy that serves no purpose. Considering the intrinsic evidence, the location information described in illustrative embodiments of the ’560 patent is information generated by GPS module 25 or “by means of measurements using the first and/or the second wireless access network.” Ex. 1001, 5:25–30, 9:59–62. As explained in the ’560 patent: This location information can be useful e.g. in identifying where handover regions exist, and in solving location-specific outages or problems, e.g. dropped calls due to missing neighbour. It may also be useful when an operator changes configuration (optimisation of downlink power, antenna tilt, etc) and wants to measure the effect on the cells relevant for inter-RAT cell change or handover. Ex. 1001, 5:30–42. Thus, the “location” of claim 7 is the actual location of the “detected user terminals” within the cell in which the terminals are operating.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,660,560
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.