- AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00818 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institution of inter partes review of claims 1–19 (“the challenged claims”) of U.S. Patent No. 10,334,499 B2 (Ex. 1001, “the ’499 patent”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Ericsson filed a Preliminary Reply (Paper 9). We determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and therefore we instituted this proceeding on March 9, 2023, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”). We granted a request in IPR2023-00831 by AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC to be joined as a Petitioner in this proceeding. Paper 19. After a joint request of Patent Owner and Ericsson, we terminated the proceeding as to Ericsson, leaving AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (“Petitioner”) as the lead (and sole) petitioner in this proceeding. Papers 16, 17, 20.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1004. Thus issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1005.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units. As Petitioner argues, there does not appear to be any indication in the specification and other intrinsic evidence that “digital representation” should be given more than its ordinary meaning, or that an underlying construction of “radio resources” would not be applied to this claim term, which explicitly includes “radio resources.” Pet. Reply 9–10 (citing Ex. 1001, representation” in the specification of the ’499 patent). Our construction is further supported by the language of the claims, which requires that each “set of radio resources” is “for transmission at an antenna of the first remote unit.” Ex. 1001, 14:17–19, 14:22–24, 15:3–5, 15:8–10, 16:6–8, 16:11–13. With respect to the “digital representation” of “set[s] of radio resources,” the specification of the ’499 patent describes that in the downlink (base station to DRU antenna) path for data, RF signals received at the DAU from base station(s), are down-converted, digitized, and further processed resulting in “independently serialized, parallel data streams” that are delivered to DRUs. Ex. 1001, 4:63–5:12. Petitioner contends that this description of delivery of a digitized version of an RF signal to DRUs describes the sending/transmission of a digital representation of the radio. Pet. 9–10. While Patent Owner appears to argue that a “digital representation” of a radio resource would be only an “identifier” of, e.g., an RF carrier (PO Resp. 18), this does not appear to be supported by the specification or the cited testimony of Dr. Chrissan. We do not see a reason to relate “digital representation of . . . a set of radio resources” in the claims to the description in the ’499 patent specification of the remote configuration of DRU parameter settings via the DAU, including detecting or determining radio resources assigned to a DRU and configuring the DRU, turning on and off individual carriers transmitted and received by a DRU. PO Resp. 16–18 (citing Ex. 1001, 4:50–62, 6:31–44, 7:44–50, 12:15–39, 12:58–13:2). No cited portion of the specification describes these signals sent from a DAU to control a DRU as digital representations of a set of radio resources. While Patent Owner cites, in support, Dr. Chrissan’s declaration, Dr. Chrissan does” slip op. at 16
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentablePTAB · Jun 10, 2022 · IPR2021-01230 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–12 and 14 are unpatentable under §103 based on How-767 and Feild; the Board did not reach the other listed grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“review. Paper 6 (“Institution Decision,” “Dec.”). Following institution, STMicroelectronics filed a petition for inter partes review and a Motion for Joinder in IPR2021-01230, requesting that STMicroelectronics be joined as a petitioner in IPR2021-00130. STMicroelectronics, Inc. v. Monterey Research, LLC, IPR2021-01230, Papers 1, 3. We instituted trial in IPR2021-01230, granted the Motion for Joinder, and added STMicroelectronics as a petitioner to IPR2021-00130. Id., Paper 7. A copy of that decision was entered in the record of IPR2021-00130. Paper 15.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 19
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s Reply argument is not responsive to Patent Owner’s argument that a person of ordinary skill in the art would not have been motivated to integrate a standalone flash memory within an ASIC. See PO Resp. 75 (citing Ex. 2002, 53:25–54:3). Instead, Petitioner’s Reply arguments appear to proceed in a new direction with a new approach as compared to the positions advanced in the Petition. Accordingly, Petitioner’s new and non-responsive Reply arguments exceed the proper scope of a reply and have not been considered in rendering this Final Written Decision. See CTPG 73–74.” slip op. at 83
Patent outcomesUS 6,459,625 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,459,625 - Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentablePTAB · Jun 10, 2022 · IPR2021-00130 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–12 and 14 are unpatentable under § 103 based on the grounds shown in the decision’s conclusion table.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 STMicroelectronics, Inc. was joined as a petitioner in this proceeding based on a petition and motion for joinder filed in IPR2021-01230, which were granted. These proceedings were terminated as to petitioner Qualcomm Incorporated. See Paper 37.” slip op. at 1
- Skill levelSkill level petitioner adoptedDecided for petitioner
“regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“does not explain how any of the supposed advantages of Feild are relevant to How-767 or how the combination would achieve these supposed advantages. Petitioner identifies reducing fabrication steps, eliminating polishing steps, and high electromigration performance as benefits of Feild’s fabrication method. See Pet. 63 (citing Ex. 1011, 2:48–3:10; Ex. 1006 ¶ 149). Dr. Lall’s cited testimony identifies these advantages compared to the prior art techniques discussed in Feild that use additional polishing steps, multiple-step processing, and the use of chemical mechanical polishing. See Ex. 1006 ¶ 149 (citing Ex. 1011, 2:16–32, 2:20–30, 2:48–3:10). Petitioner also asserts that How-767 presents Figure 1 as an exemplary cross-sectional view of a generic integrated circuit and never suggests that the precise structure of Figure 1 is required. See Pet. 65 (citing Ex. 1003, 1:21–22). On this basis Petitioner contends that a person of ordinary skill in the art would have understood that other cross-sectional interconnection arrangements could be used. See id. (citing Ex. 1006 ¶ 152). Petitioner asserts that a person of ordinary skill in the art would have understood that forming How-767’s routing structure according to the interconnect structure taught by Feild would involve a simple substitution of Feild’s cross-sectional interconnect structure for How-767’s exemplary cross-sectional interconnect structure to obtain predictable results. See id. (citing Ex. 1006 ¶ 153). Accordingly, we understand that Feild’s advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance would be achieved by forming How-767’s routing structure according to Feild’s cross-sectional interconnect structure. In sum, based on the entire trial record, we determine that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify How-767 by “forming How-767’s routing structure according to the interconnect structure taught by Feild” in order to obtain the advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance. See Pet. 62–65 (citations omitted); KSR, 550 U.S. at 418.” slip op. at 76
Patent outcomesUS 6,459,625 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,459,625 - Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48
Patent outcomesUS 5,974,116 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,974,116 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision
Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43
Patent outcomesUS 8,908,838 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,908,838 - St. Jude Medical, Inc. / St. Jude Medical S.C., Inc. et al. v. Atlas IP LLCAll claims unpatentablePTAB · Dec 3, 2015 · IPR2015-00534 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 6, 11, 14, and 21 are unpatentable: claims 6, 14, and 21 as anticipated by Natarajan 1992 and obvious over Natarajan ’542 and Bantz; claim 11 as obvious over two combinations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has shown by a preponderance of the evidence that claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734 are unpatentable. A. Procedural History St. Jude Medical, Inc., St. Jude Medical S.C., Inc., and Pacesetter, Inc. (collectively, “St. Jude”) filed a Petition for inter partes review of claims 6, 11, 14, 21, and 44 of U.S. Patent No. 5,371,734 (Ex. 1001, “the ’734 patent”). Paper 2 (“Pet.”). Atlas IP LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On December 8, 2014, we instituted an inter partes review of claims 6, 11, 14, and 21 of the ’734 patent on asserted grounds of unpatentability. Paper 7 (“Dec.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“by the parties as the “each” limitation: “repeating communication cycles, each of which has intervals during which the hub and the remotes transmit and receive frames.” E.g., Ex. 1001, 46:29–31 (claim 6). In the Decision on Institution, we construed this claim limitation “to require that each communication cycle include intervals during which the hub and remotes are allowed to transmit and receive, without requiring actual transmission of frames.” Dec. 12. We based our construction on the language of the claims, including additional language referring to “intervals . . . when the hub is allowed to transmit frames to the remotes [and] when the remotes are allowed to transmit frames to the hub.” Id. at 10 (citing Ex. 1001, 46:36– 39). We also considered the written description of the ’542 patent, which speaks of transmission opportunities during which remotes are provided an opportunity to transmit messages to the hub. Id. (citing Ex. 1001, 12:14– 17).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner relies on a combination of Bella’s time slot cancellation method with the system of Natarajan 1992 to satisfy the additional limitations of claim 11. Pet. 34–38; Ex. 1002 ¶¶ 161–67. Like Bella, Natarajan 1992 describes a system in which mobile stations make reservation requests for slot allocation. Ex. 1011, 7–8; see Pet. 37–38; Ex. 1002 ¶ 165. If a mobile station requests isochronous service, the requested number of slots will be allocated to the mobile station in Period B of every frame until the mobile station cancels the allocation by sending a cancellation request. Ex. 1011, 8; see Pet. 36, 38; Ex. 1002 ¶ 166. Thus, Natarajan 1992 teaches “revoking a previous transmission opportunity allocation of a remote,” as recited in claim 11, when the hub receives a cancellation request from the remote. See Pet. 37–38; Ex. 1002 ¶ 166–67. If the system of Natarajan 1992 instead utilized Bella’s cancellation method, which revokes a previous transmission allocation when a remote transmits no packets in a communication cycle, we are persuaded by Petitioner’s argument that the combination would result in “the hub revoking a previous transmission opportunity allocation of a remote which has not transmitted more than a predetermined number of frames” (zero) “during a previous number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167. Furthermore, if Natarajan 1992 employed the cancellation technique of Bella, the hub would be “monitoring the frames transmitted by each remote during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164. Petitioner also has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 11 would have been obvious to one of ordinary skill in the art in view of the combined teachings of the references. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According to Petitioner, for example, the combination would simplify the cancellation method of Natarajan 1992 by allowing the hub to revoke a time slot allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158. Relying on Dr. Haas’s testimony for support, Petitioner also asserts that using Bella’s cancellation method makes even more sense when the remotes are mobile, as in Natarajan 1992, because they may move outside of the hub’s range abruptly and be unable to cancel their own reservations. Pet. 37; Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that only ordinary skill would be required to implement the reservation and cancellation method of Bella in the Natarajan 1992 system. See Pet. 37; Ex. 1002 ¶ 160.” slip op. at 23
Patent outcomesUS 5,371,734 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,371,734
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.