- 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 - 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.