- AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision
The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26
Patent outcomesUS 10,841,958 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,841,958 - Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision
Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23
Patent outcomesUS 8,452,646 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,452,646
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.