• DISH Network L.L.C. v. Multimedia Content Management LLCInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01015 · APJ Matthew J Mcneill · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, Preliminary Response, Reply, and Sur-reply, as well as the parties’ supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent. We, therefore, do not institute an inter partes review of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent.” slip op. at 2

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

    “implemented within the bidirectional communication paradigm, but Petitioner has not sufficiently explained why an ordinarily skilled artisan would have been motivated to use both the prior art access control using bidirectional communication and the improved access control using unidirectional communication at the same time. Hoang ’980 teaches “the present invention teaches methods and systems for communicating a client’s DOD account status to a client using uni-directional communications.” Ex. 1008 ¶ 49. Thus, unidirectional communications are used to send a client’s on-demand account status from a server to a client. Hoang ’980’s teaching that “all aspects of the present invention can be implemented within the bi-directional communication paradigm” indicates that a server within a system with bidirectional communication capabilities could transmit a client’s on-demand status to a client. However, Petitioner’s inference that this system would then also utilize account control using the resource-intensive bidirectional communications is speculative and not sufficiently supported by the evidence of record. Moreover, Petitioner’s proposed combination would use both unidirectional access control and bidirectional access control for the same data request. Petitioner argues the benefits of on-demand video would have motivated an ordinarily skilled artisan to implement access control using both unidirectional and bidirectional communications (Pet. 18‒20). Mr. Wechselberger’s testimony that user-initiated video-on-demand programming was a beneficial feature that cannot be used in a unidirectional system explains why an ordinarily skilled artisan may have been motivated to use bidirectional communications to control access to on-demand video content. Ex. 1006 ¶¶ 109‒110. But Petitioner has failed to establish why an ordinarily skilled artisan would have used both access control paradigms for the same data request. More specifically, with respect to the proposed combination, Petitioner does not explain persuasively why an ordinarily skilled artisan would have continued to use unidirectional communications to provide access control for a data request when using bidirectional communications already provides access control for the same data request. For these reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 7. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 7. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art, which Patent Owner asserted in a prior petition. Prelim. Resp. 2. Patent Owner asserts that for the purposes of determining whether to institute the Petition, the differences between its previously-proposed definition and Petitioner’s proposed definition are not dispositive. Id. at 2‒3. We are satisfied that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’468 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

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

    “Petitioner proposes constructions for the following terms: “to generate[ing . . .] controller instructions” (Pet. 8‒9); “a controller node” (Pet. 9‒10); “a service provider network” (Pet. 10‒12); “selectively transmit[ting, by the plurality of gateway units,] the content requests to the service provider network in accordance with the controller instructions” (Pet. 13); and “gateway units” (Pet. 13‒14). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒5. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., 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 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,799,468
• DISH Network L.L.C. v. Multimedia Content Management LLCInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01014 · APJ Matthew J Mcneill · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “2. Independent Claim 1 A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority date of the ’925 patent is before the effective date of the applicable AIA amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply. determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze Petitioner’s obviousness grounds with the principles identified above in mind.” slip op. at 11

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

    “motivated to combine the prior art method of controlling access to programming using bidirectional communications with the improved method of controlling access to programming using only unidirectional communications because Hoang ’980 teaches “those skilled in the art will recognize that all aspects of the present invention can be implemented within the bi-directional communication paradigm, the only difference being that even more features can be provided to the digital broadcast and DOD user when a bi-directional communication link is available.” Ex. 1008 ¶ 49.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 8. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 8. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art,” slip op. at 8

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

    “transmit[ting, by the plurality of network elements, the] content requests to the service provider network in accordance with the controller instructions” (Pet. 17); “network elements” (Pet. 18); and “pay-per-view advertising” (Pet. 18‒19). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒6. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., 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 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,465,925
• Samsung Electronics America, Inc. / Asus Computer International, Inc. v. James B. GoodmanSome claims unpatentable
  PTAB · Oct 29, 2019 · IPR2017-02021 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1, 5, 10, and 16 are unpatentable over Ooishi and Palaniswami, with Abe added for claims 10 and 16; claims 2–4, 6–9, and 11–15, 17–20 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “reasonable construction consistent with the Specification of a control device “for selectively electrically isolating said memory devices from respective address lines and respective control lines so that when said memory devices are electrically isolated, any signals received on said respective address lines and respective control lines do not reach said memory devices” as recited in independent claims 1 and 10 requires that the control device electrically isolate the memory devices from all address and control lines that communicate with the memory devices.10” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co, 383 U.S. 1, 17 (1966). Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’315 patent (a “POSITA”) would have had, inter alia, a bachelor’s degree in electrical, electronics, computer engineering; or the equivalent training, and would have had approximately 2 to 3 years of experience in computer systems, circuits, electronics, or a related discipline. Pet. 9; Ex. 1002 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of the level of ordinary skill. See PO Resp. 8. Based on our review of the ’315 patent, the cited prior art, and Dr. Wolfe’s testimony, we determine a specific finding regarding ordinary skill level is not required as the prior art reflects an appropriate level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). However, to the extent a specific finding regarding the level of skill is required, we find Petitioner’s articulation of a person of ordinary skill in the art is consistent with the teachings of the prior art and adopt Petitioner’s description of a POSITA as someone who “would have had a bachelor’s degree in electrical, electronics, or computer engineering; or the equivalent training, and would have had approximately two to three years of experience in computer systems, circuits, electronics, or a related discipline.” See Pet. 9.” slip op. at 10

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

    “Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). A reference is deemed publically accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Petitioner asserts JESD21-C was published January 1997 and is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 37–38. As support, Petitioner relies upon the Declaration of John J. Kelley (“the Kelley Declaration”), the current President of the Solid State Technology Association of the Joint Electron Device Engineering Council (“JEDEC”). See Ex. 1007 ¶ 2. Mr. Kelly states that JEDEC specification JESD21-C, Configurations for Solid State Memories, Release 7 (January 1997), a copy of which is attached to his declaration as Exhibit 17, “was made publicly available in January 1997.” Id. ¶¶ 4, 7. Mr. Kelley testifies that in January 1997 copies of the entire JESD21-C volume “would . . . have been available for purchase by anyone in the public” and that “pages comprising the specifically updated modules would have been sent to those who subscribed to the annual updating service for JESD21-C.” Id. ¶ 6. Patent Owner does not dispute that JESD21-C qualifies as prior art under 35 U.S.C. § 102(b). See PO Resp. 7. Based on the current record, we determine JESD21-C qualifies as a prior art printed publication under § 102(b).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not persuasively shown that Dell discloses a control device that electrically isolates the memory devices as required under the claim construction set forth above in devices even when the devices are in a low-power or self-refresh mode, Petitioner has not shown that Dell’s memory devices are electrically isolated from “respective control lines” such that “any signals received on said . . . respective control lines do not reach said memory devices” as required by claims 1 and 10. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’315 patent is unpatentable over Dell or that claim 10 is unpatentable over the combined teachings of Dell and Abe.” slip op. at 21

  Patent outcomesUS 6,243,315 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,243,315
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,976,069
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,394,432
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,397,431
• Juniper Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing

  The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

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

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  Claim constructionDiscretionary denial
  Patents in suitUS 7,647,633
• Infinera Corp. v. Core Optical Technologies, LLCRehearing denied
  PTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3

  • BurdenDecided for patent owner

    “Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9

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

    “combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 6,782,211
• Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentable
  PTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32

  Patent outcomesUS 8,279,991 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,279,991
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand

  Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.

  RulingsRemand decision

  • RemandOther

    “After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17

  Patent outcomesUS 7,075,585 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,585

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.