• Realtek Semiconductor Corp. v. Future Link Systems, LLCInstitution denied
  PTAB · Dec 19, 2022 · IPR2022-01071 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Patent Owner disclaimed all challenged claims, 1–19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “II. ANALYSIS The Board will not institute an inter partes review when a Patent Owner has disclaimed all claims challenged in the Petition. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Electric Co. v. United Techs. Co. et al., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential); see also 35 U.S.C. § 253(a) (providing that a patentee may disclaim); 37 CFR § 1.321(a) (requirements for disclaimer). Our review of the record shows that Patent Owner has now filed a disclaimer meeting the requirements of § 1.321(a) and that all of the challenged claims have therefore been disclaimed. For that reason, the Petition is denied and we do not institute an inter partes review.” slip op. at 2

  None
  Patents in suitUS 8,099,614
• Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00906 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 are unpatentable; substitute claims 66–85 are allowed because unpatentability over the asserted prior art was not shown.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “evidence that any of Patent Owner’s proposed substitute claims 66–85 in the Revised Motion to Amend Claims are unpatentable over prior art. Patent Owner, on the other hand, has proved that its proposed substitute claims 66– 1 Petitioner entity Dell, Inc. was terminated from this proceeding on January 11, 2022. Paper 23. Petitioner entities ZTE Corporation and ZTE (USA) Inc. were terminated from this proceeding on October 20, 2021. Paper 17. Petitioner entity Cradlepoint Inc. was terminated from this proceeding on November 7, 2022. Paper 72. Accordingly, Patent Owner’s Revised Motion to Amend Claims is granted. A.” slip op. at 2

  • Strike new argumentNew argument consideredDenied

    “For the foregoing reasons, Patent Owner’s Motion to Strike is denied.” slip op. at 91

  • ExcludeMotion to exclude, deniedDenied

    “prejudicial to Petitioner because they all post-date the priority date of the ’388 patent. Paper 59, 3–4. However, as we explained above, these documents need not have pre-dated the critical date of the ’388 patent. It is not necessary that one with ordinary skill in the art would have had access to them prior to June 1, 2004, or July 20, 2004. Petitioner has not shown the alleged prejudice. Additionally, our consideration of these documents did not result in a favorable conclusion for Patent Owner, either on the matter of Patent Owner’s proposed claim construction or on the matter of Patent Owner’s alleged satisfaction of a long-felt need.” slip op. at 97

  Patent outcomesUS 7,580,388 unpatentable
  Nonecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 7,580,388
• Nichia Corporation v. Document Security Systems, Inc.Adverse judgment
  PTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” The only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3

  • RemandOther

    “Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2

  None
  Patents in suitUS 7,524,087
• Honeywell International, Inc. / TCT Mobile (US) Inc. et al. v. 3g Licensing S.A.No claims unpatentable
  PTAB · Nov 14, 2022 · IPR2021-00908 · APJ Russell E Cass · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–7, 9–13, and 15–23 unpatentable as obvious over Philips46 alone or Philips46 and Nokia.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Neither party proposes a construction of any claim terms. Pet. 29; PO Resp. 15. We determine that it is not necessary to provide an express interpretation of any claim terms for purposes of this Decision. 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 9

  • Skill levelSkill level board ownDecided for patent owner

    “In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art as including a Bachelor’s degree in electrical engineering, computer engineering, or a similar discipline with approximately two years of signal processing experience, which is supported by the declaration of Dr. Clark and the prior art of record. Inst. Dec. 12 (citing Ex. 1002 ¶¶ 70–72). We also agreed with Patent Owner that a combination of more experience in the field and less education or more education and less experience in the field may also suffice. Id. In its Patent Owner Response, Patent Owner states that it does not object to the level of ordinary skill we adopted in the Institution Decision. PO Resp. 9. For purposes of this Final Written Decision, we adhere to the level of ordinary skill adopted in our Institution Decision, which is consistent with the disclosures of the ’718 patent and the asserted prior art.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “First, we find that Petitioner has not sufficiently shown that one of ordinary skill would have been motivated to swap the last two bits in the last row of the Philips46 table in order to provide more protection to the most significant bit (MSB). Even if we were to agree with Petitioner that one of ordinary skill would have understood that swapping the last two bits would have provided more protection to the MSB, Petitioner has not sufficiently shown that one of ordinary skill would have believed that such a change would be desirable. Patent Owner introduces evidence from Dr. Smith and the ’781 patent that there was “a tradeoff between BER and RMS error” and that “efforts to minimize RMS error and to minimize BER produce conflicting and incompatible results.” Ex. 1001, 11:38–44; Ex. 2006 ¶¶ 13, 43. These conflicting results are supported by the ’718 patent specification’s comparison of various codes (represented by C1, C2, embodiment 2, and embodiment 3), which found that the embodiment that had the best BER performance (C1) had the worst RMS error performance, and the embodiment with the best RMS error performance (embodiment 3) had the worst BER performance. Ex. 1001, 11:48–51, 11:58–61. We also find credible Dr. Smith’s testimony that “[a]dding all protection to just the MSB removes protection for all other bits,” which would be expected to reduce BER performance. Ex. 2006 ¶ 16.” slip op. at 26

  Patent outcomesUS 7,319,718 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,319,718
• Hewlett Packard Enterprise Company v. K.Mizra LLCInstitution denied
  PTAB · Oct 31, 2022 · IPR2022-00843 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been unpatentable over Gleichauf, Ovadia, and Lewis.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “that the addition of Lewis would allegedly provide, we conclude that Petitioner fails to show that a skilled artisan would have been motivated to combine Lewis with Gleichauf. Cf. In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient absent an explanation of why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”).6 Petitioner does not adequately explain why one of skill in the art would have substituted Lewis’ quarantine server for Gleichauf’s remediation server. Due to the lack of a sufficient motivation to combine, Petitioner has not shown a reasonable likelihood of proving claim 1 unpatentable over the combination of Gleichauf, Ovadia, and Lewis. And, for the same reasons, Petitioner has not shown a reasonable likelihood of proving independent claims 10 and 17 or dependent claims 2–9, 11–16, and 18–20 unpatentable.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We find these arguments insufficient because they do not show that the artisan would have made the combination. Instead, they show, at best, that Gleichauf and Lewis could have been combined to meet the subject 5 Petitioner does not argue, so we do not consider, whether Gleichauf’s remediation server might be considered a “quarantine server.” limitations, which is not enough. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,516,048
• Cradlepoint, Inc. / Dell Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Oct 18, 2022 · IPR2021-00640 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–96 challenged in the decision were shown unpatentable under §103 over the listed combinations of TS 45.008, TS 25.304, TS 25.331, and Japenga.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience (or additional education), including experience with cellular telecommunication systems,” that such experience would have included “designing or implementing user equipment or network equipment or signaling protocols,” and that such a person “would have [had] a working understanding of the then-existing wireless communications standards.” Pet. 16–17 (citing Ex. 1004 ¶¶ 20–24). Patent Owner “concurs with Petitioner[] on the proposed level of ordinary skill in the art at the time of invention.” PO Resp. 7–8. Because the ’383 patent “relates to a dual mode mobile telecommunication device in general (for instance a UMTS (Universal Mobile Telecommunications System) and GSM (Global System for Mobile Communications) dual mode device), and to an apparatus and method for selecting cells in mobile telecommunications system user equipment” (Ex. 1001, 1:21–26), and in view of the parties’ agreement, we find Petitioner’s formulation appropriate, and adopt it.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “III. CLAIM CONSTRUCTION The parties do not raise any claim construction issues and we, accordingly, do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “e. Motivation to Combine TS 25.008 and TS 25.304 Petitioner argues that one of skill in the art “would have been motivated to combine the teachings of TS 45.008 and TS 25.304 to arrive at a multi-RAT UE that performs cell reselection according to the procedures in both of these standards documents” and that the combination “would have 7 Patent Owner argued in the Response that we improperly relied on TS 45.088 for this step. See PO Resp. 8–10. As we explained at the hearing, however, that was not the case. See Paper 41, 35–36. been obvious based on the specific motivation to combine provided by the documents themselves.” Pet. 18–20. Petitioner further argues that the combination would have been nothing more than applying a known technique––“TS 25.304’s procedures for determining if a specific UTRAN cell is barred and therefore may not be camped on for a period”––to a known method ready for improvement––“TS 45.008’s procedures for identifying a UTRAN cell to reselect for camping when camped on a GSM cell”––to yield predictable results––“a multi-RAT UE capable of determining that a particular UTRAN cell should not be reselected to camp on for a period if the UTRAN cell is barred).” Id. at 19–20 (citing Ex. 1004 ¶ 187). Patent Owner does not argue that there would not have been a motivation to combine. As noted above, these references expressly incorporate each other,” slip op. at 20

  • Expert testimonyPetitioner expert creditedOther

    “TS 45.008 is a 3rd Generation Partnership Project (3GPP) specification that “specifies the Radio sub-system link control implemented in the Mobile Station (MS), Base Station System (BSS) and Mobile Switching Centre (MSC) of the digital cellular telecommunications systems GSM.” Ex. 1005, 8.5 The radio sub-system link control aspects addressed by TS 45.008 include handover, RF power control, radio link failure, cell 5 Petitioner relies on the Declaration of Craig Bishop (Ex. 1016) to establish the prior art status of the 3GPP documents. See Pet. 9–13. We find that testimony sufficient on its face, and Patent Owner does not argue these documents are not available as prior art.” slip op. at 13

  Patent outcomesUS 8,600,383 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,600,383
• Google LLC v. Express Mobile, Inc.Instituted
  PTAB · Sep 27, 2022 · IPR2022-00790 · APJ Aaron W Moore · IPR · Institution

  The Board instituted review of claims 1, 2, 5–7, and 11 on the petition’s grounds and granted Google’s motion to join the Facebook IPR.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“[this] petition and the petition in the Facebook IPR Proceeding are substantively identical”); Prelim. Resp. 9, n.2 (“Patent Owner is not including technical merits arguments in its Preliminary Response.”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “* * * As explained above, we find that only the first General Plastic factor favors denial. We thus conclude that, considered as a whole, the relevant factors do not favor a discretionary denial of institution.” slip op. at 12

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “the Motion would increase complexity. Petitioner has agreed to act as a understudy and thus will not have a material role in this proceeding unless it becomes the sole petitioning entity. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13

  • PTAB / AIA Trials › §315(e) estoppelOther

    “Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13

  Discretionary denial
  Patents in suitUS 9,063,755
• Expedia, Inc. / Homeaway.Com, Inc. et al. v. Express Mobile, Inc.Instituted
  PTAB · Sep 27, 2022 · IPR2022-00785 · APJ Aaron W Moore · IPR · Institution

  The Board instituted review on the petition’s challenges and granted joinder in IPR2021-01455, limiting the joined petitioner’s role as specified in its motion.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “A. Whether the Petition Warrants Institution 35 U.S.C. § 314(a) provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“This Petition raises grounds of unpatentability identical to those in the already instituted in IPR2021-01455.”); Prelim. Resp. 10, n.1 (“Patent Owner is not including technical merits arguments in its Preliminary Response”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “For the reasons explained below, we find the present circumstances distinguishable from those in Uniloc, and we decline to deny the Petition based on the General Plastic factors.” slip op. at 6

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “We also are not persuaded by Patent Owner’s argument that granting the Motion would increase complexity. Petitioner has agreed to act as an understudy, and thus will not have a material role in this proceeding unless all other entities are terminated. Consistent with our normal practice, all Petitioning entities will speak with one voice. And although Petitioner does identify a new expert, it states that “Dr. Jeffay agrees with Dr. Madisetti’s opinions and adopts them as his own” and that “the declaration of Dr. Jeffay is substantively identical to the declaration of Dr. Madisetti and does not expand on the scope of expert opinions provided by Dr. Madisetti in the Facebook IPR.” Mot. 3 n.1. We understand that Dr. Jeffay will have no active role in the proceeding unless and until Facebook settles and Dr. Madisetti withdraws, in which case Dr. Jeffay will be limited to the positions previously taken by Dr. Madisetti. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 12

  Discretionary denial
  Patents in suitUS 9,063,755
• TCT Mobile International Limited / TCT Mobile, Inc. et al. v. Sisvel S.P.A.All claims unpatentable
  PTAB · Sep 22, 2022 · IPR2021-00678 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1, 3–5, 11, and 13–15 are unpatentable as obvious over Dahlman and Samsung and over Nokia and Samsung.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art, which encompasses that proposed by Patent Owner and is consistent with the specification of the ’279 patent and asserted prior art of record. Our Decision stated that “Patent Owner’s argument that a person of ordinary skill in the art would not have needed to be a member of a standard-setting organization does not address the standard actually proposed by Petitioner – familiarity with the 3GPP specifications, including LTE.” Dec. on Inst. 7−8. We stated that the ’279 patent devotes a significant portion of its disclosure to discussing 3GPP LTE communications systems and, thus, we find familiarity with 3GPP specifications would have been expected of a person of ordinary skill in the art. Id. at 8. And we stated that the asserted prior art addresses and describes 3GPP specifications, and, therefore, it is reasonable to conclude that a person of ordinary skill in the art would have had familiarity with such specifications. Id.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Defining the term “Resource Indication Value (RIV)” to include the specific calculations disclosed in columns 16 through 18 of the ’279 patent, without a cogent and properly supported explanation for why the term should be thus construed, would amount to improperly importing a limitation into the claim from a preferred embodiment. Phillips v. AWH limitations from the specification into the claim”). There is no language in the claim itself that alludes to how the values are calculated or how they are to be interpreted. And as Petitioner points out, the ’279 patent specification provides a broader description of the term, by stating that the “resource indication value (RIV) indicat[es] a start resource block and the length of consecutively-allocated resource blocks (RBs).” Id. at 13:35−38; Pet. 42; see also Reply 4−5 (arguing that the calculation of an invalid RIV value is irrelevant to the claims because the claims do not require any method of calculating such values); Tr. 22:1−23:25 (arguing that a RIV is a value denoting a start resource block and the length of consecutively allocated resource blocks as stated in the ’279 patent specification). Accordingly, we determine that the “Resource Indication Value (RIV)” recited in claims 4 and 14, does not require a RIV calculation method of the type Patent Owner argues.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). When there is an established publisher there is a presumption of public accessibility as of the publication date. Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Giora George Angres, Ltd. v. Tinny Beauty & Figure, Inc., No. 96-1507, 1997 WL 355479, at *7 (Fed. Cir. July 24, 1997) (“[A]s Memoirs was published (in England) by an established publisher, there is no reason to suspect that it was not publicly available, including to one skilled in the art, and no evidence was presented that it was not.” (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)) (emphasis omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Smith because it is supported by evidence of record and provides explanation sufficient to understand the relationship between the PDCCH signaling used for SPS deactivation and the content of that signal with respect to the identity of the terminal, the C-RNTI. See Lanning Decl. ¶¶ 262–263, 278−280. The proffered testimony of Dr. Smith characterizes Dahlman’s disclosures as limited to what it expressly discloses, and not for what they would suggest to a person of ordinary skill in the art. Smith Decl. ¶¶ 115−120. Dr. Smith’s testimony also does not explain or rebut the Lanning testimony on which RNTI Dahlman suggests for use in the PDCCH signal for SPS activation and deactivation. Id. Indeed, Dr. Smith’s testimony is silent as to what Dahlman’s teachings of using the PDCCH for SPS activation and deactivation would have taught or suggested to a person of ordinary skill in the art. Merely opining that Dahlman limits its discussion of C-RNTI as an identify of the terminal is insufficient to rebut the testimony of Mr. Lanning that the PDCCH transmits DCI which includes the RNTI and that a person of ordinary skill in the art would understand that for DCI 1A transmission that RNTI would be a C-RNTI. Lanning Decl. ¶¶ 278−280. Thus, Petitioner’s position that a person of ordinary skill in the art “would have understood that for deactivation, the DCI sent on the PDCCH must include the C-RNTI” (Pet. 38) is supported by expert testimony that is consistent with Dahlman’s teachings. Mr. Lanning’s testimony also makes a logical connection between Dahlman’s disclosure of using RNTIs, and particularly a C-RNTI, in the DCI (of the PDCCH) and Dahlman’s disclosure of using the PDCCH for SPS deactivation signaling (see Ex. 1003, 314, 352, 477).” slip op. at 28

  Patent outcomesUS 8,971,279 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,971,279
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00084 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 over Gleichauf, Ovadia, and Lewis because the petitioner did not sufficiently explain why a skilled artisan would have combined Gleichauf and Lewis as …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Dr. Reddy additionally testifies that “URL redirection is a well-known concept in HTTP traffic” (Ex. 1003 ¶ 24) and that “[a person of ordinary skill in the art] would have been familiar with URL redirection, which was a common technique used to forcibly provide an alternative response to a client’s request for a web page” (id. at ¶ 134). During the oral hearing, Petitioner also stated, citing the Reddy Declaration, that “it was well known to redirect traffic to a separate server.” Tr. 17:8–12 (citing Ex. 1003 ¶ 134). This, however, does not provide a sufficient explanation why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis. This rationale and all of the other reasons for the proposed combination proffered by Petitioner establish, at most, that Gleichauf and Lewis could have been combined to meet limitations [1.8] and [1.9], rather than a person of ordinary skill in the art would have been motivated to make the proposed combination. This is insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). We find, therefore, that Petitioner does not provide a sufficient reasoning to support obviousness of claim 1 based on the proposed combination.7 See Kinetic Concepts, 688 F.3d at 1366–67 (holding that “some kind of motivation must be shown from some source, so that the [trier of fact] can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented [invention]”)); InTouch Techs., 751 F.3d at 1348–49 (Fed. Cir. 2014) (“[The expert witness’s] testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”).” slip op. at 36

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705

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