- PTAB · Dec 19, 2022 · IPR2022-01171 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–11 and 13–23, finding a reasonable likelihood that the Diggs and Cheng combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“. . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure, 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution at 12 n.5 (instituting inter partes review notwithstanding the” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A patent claim is unpatentable under 35 U.S.C. § 103 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual 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 ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
- Skill levelSkill level petitioner adoptedDecided for petitioner
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,966,347 - Apple Inc. / LG Electronics, Inc. et al. v. Arigna Technology Ltd.Institution deniedPTAB · Dec 2, 2022 · IPR2022-01037 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, and 5–17 unpatentable, including a sufficient motivation and expectation of success for its proposed Sokal modifications.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we determine that Petitioner has not sufficiently shown that one of ordinary skill in the art would have been motivated to create a circuit such as that shown in Petitioner’s proposed alternative Figure 5 or that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. 5. Conclusion Petitioner’s contentions that claims 1 and 5 would have been obvious over Sokal, Sedra, and Tsutsui rely in part on the alternative Sokal Figure 5 circuit proposed by Petitioner. Pet. 32–46. For the reasons discussed above, the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claim 1 or 5.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not found
“Additionally, Petitioner has not described a motivation to combine the different embodiments of Sokal. We are mindful that “[c]ombining two embodiments disclosed adjacent to each other” does not “require a leap of inventiveness” and may be a predictable variation supporting an obviousness determination. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Still, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Eli Lilly and Co. v. Zenith Goldline Pharm., 471 F.3d 1369, 1380 (Fed. Cir. 2006). Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would have motivated one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998). modification (changing the input for attenuator 3) that is specifically described in Sokal as relating to a fixed phase-shift network, but employed it for use with a variable phase-shift network. Prelim. Resp. 22–25. In doing so, the only motivation Petitioner advances for making this modification is in the quote from Sokal that it would “eas[e] the requirements imposed upon the fixed phase-shift network.” Pet. 13 (quoting Ex. 1005, 14:8–10). This does not address why one of ordinary skill would have selected this modification where, as in Figure 5 (and Petitioner’s proposed alternative version of Figure 5) a variable phase-shift network, and not a fixed phase-shift network, is used. While not mentioned in the Petition, Petitioner’s declarant testifies regarding the modification that “this advantageous performance would be provided whether the phase-shift network is fixed or variable.” Ex. 1003 ¶ 58. However, we agree with Patent Owner that this is conclusory and provides no meaningful explanation regarding the purported advantages in a variable phase-shift network. See Prelim. Resp. 24–25. Additionally, as discussed above, Petitioner appears to employ a further modification of Sokal’s “[m]ore elaborate versions of attenuator 3” embodiment, in which only a forward signal is sensed by attenuator 3. Pet. 13–14 (quoting Ex. 1005, 7:13–21). Petitioner does not describe the motivation for using only the forward output signal, and does not provide any discussion regarding whether one of ordinary skill would have expected to be successful in combining the further modification of Sokal’s “[m]ore elaborate” attenuator 3 with the Figure 5 embodiment of Sokal, removing the reflected power from the phase correcting circuitry. the three modifications) of Sokal disclosed side by side, Petitioner proposes that we combine a variable phase-shift network embodiment (Figure 5) with a fixed phase-shift embodiment (the first modification) with an unsupported modification to Sokal’s “[m]ore elaborate” attenuator 3 embodiment (the third modification), without sufficient support regarding the motivation to do so or regarding the likelihood of success in the result. For these reasons, we determine that Petitioner has not sufficiently shown that one of ordinary skill in the art would have been motivated to create a circuit such as that shown in Petitioner’s proposed alternative Figure 5 or that one of ordinary skill in the art would have had a reasonable expectation of success in doing so.” slip op. at 20
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,947,164 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Dec 2, 2022 · IPR2022-00949 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted Brown and Neal combinations, including the Shuster ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill in the Art The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. See Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). POSITA “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command or equivalent field,” wherein “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“search for a product that is offered by multiple suppliers, a hierarchy of cascading searchable data sets in a database system is searched until a match is found. Pet. 32; see also Ex. 1008, Abstract, 5:58–60, 7:9–12. And, as Patent Owner points out, Neal’s system manager configures the predetermined hierarchy of data sets in the database system in which to search. Prelim. Resp. 33; see Ex. 1008, 5:58–64. We are persuaded by Patent Owner’s contention that a POSITA would not have been motivated to combine Brown’s system in which the list of choices of full title descriptions is refined for user selection until the user converges on one choice (see Ex. 1007, 6:41–50), with “a database system such as Neal in which the realm of possible results is already predefined by a system manager.” Prelim. Resp. 34–35. As Patent Owner points out, “[Petitioner]’s basis for the Neal combination hinges on the Brown exception condition where multiple hyperlink URLs are retrieved due to an ambiguous speech command.” Id. at 35–36. But “[w]ith no knowledge of ‘desired information,’ Neal’s sequential search methodology is meaningless when applied to Brown’s set of ambiguous hyperlink URLs.” Id. at 36. Petitioner’s contention that a POSITA would have been motivated to modify the system of Brown with the teachings of Neal does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, Petitioner’s obviousness position does not sufficiently explain why a person which the list of choices of full title descriptions is refined for user selection until there is no ambiguity (see Ex. 1007, 6:41–50), using Neal’s search of a favored supplier in a hierarchy of cascading searchable data sets. See Ex. 1008, Abstract, 5:58–60, 7:9–12. Indeed, Petitioner does not direct us to persuasive evidence that applying Brown’s IVR system using Neal’s sequential searching technique (Pet. 36–37) would have been expected to provide any advantage, outside the teachings of the ’402 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Yarowsky’s declaration testimony to support its contention that one of ordinary skill in the art would have combined the teachings of Brown and Neal such that “[i]f the data supplier (e.g., a website in Brown) does not have the desired information, then the search continues to the second preferred supplier of information, and so on until a match is found or all the websites have been visited.” Pet. 36–37. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See In re Magnum Oil Tools, 829 F.3d at 1380. Instead, we conclude that Petitioner uses improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - PTAB · Dec 1, 2022 · IPR2022-01076 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1, 3, and 6–19 on all petition grounds and granted Bank of America’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Whether the Petition Warrants Institution Petitioner states that its Petition and accompanying declaration of Dr. Black (Exhibit 1003), are “substantively identical” to those filed by Samsung in the Samsung IPR, with the only differences being non-substantive introductory matters and mandatory notices. See Pet. 1; Mot. 6. We previously instituted an inter partes review in the Samsung IPR. See IPR2022-00113, Paper 8 (“Dec. on Inst.”). We incorporate our previous analysis regarding the asserted grounds of unpatentability, and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’480 patent challenged in the Petition for the same reasons. See Dec. on Inst. 28. Therefore, we determine that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon considering the parties’ arguments and the evidence presented, we are persuaded that it is appropriate under these circumstances to join Petitioner to the Samsung IPR. Petitioner challenges the same claims that are challenged in the Samsung IPR on the same grounds using the same prior art and evidence. Petitioner explicitly agrees that it will take an understudy role in the Samsung IPR, and has shown that the trial schedule will not be affected at all by joinder. Thus, joinder to the Samsung IPR would result in the just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Accordingly, for the reasons discussed above, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Samsung IPR.” slip op. at 11
NonePatents in suitUS 10,992,480 - PTAB · Nov 29, 2022 · IPR2022-01067 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–4, 8, 10–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“. . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure, 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution at 12 n.5 (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). We find that Petitioner’s stipulation (Ex. 1018) is the same as the one in Sand Revolution, where the petitioner stipulated that, if the IPR is instituted, the petitioner will not pursue the same grounds in the district court litigation. Sand Revolution at 11–12. In that case, the panel held that petitioner’s stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board as well as concerns of potentially conflicting decisions” and that Fintiv factor 4 “weighs marginally in favor of not exercising discretion to deny institution.” Id. at 12.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a Master’s degree in electrical engineering or an equivalent field and two years of academic or industry experience working with error correction in memory devices.” Pet. 14 (citing Ex. 1002 ¶ 19). For purposes of the preliminary response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 18. For purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“what it means to “partially decode.” Prelim. Resp. 14–15. We disagree. Although the sentence describes the function of a decoder module, it does not describe what it means to decode (or partially decode) encoded data. We decline to adopt Patent Owner’s proposed construction because it replaces the claim language “decode the received encoded data to generate a plurality of partially decoded data streams” with a sentence from the Specification that does not describe “decod[ing]” or “partially decoded.” Patent Owner’s proposed construction fails to capture the meanings of these words. Instead, it merely replaces the claim term “decode” with the broader term “process.” We agree with Patent Owner, however, that “decode” requires more than just buffering. The Specification twice mentions buffering. Ex. 1001, 6:11–14 (quoted above); id. at 6:46–50 (“[E]ncoded data may be read from a set of one or more of sectors . . . by a decoder sub-module . . . and processed (e.g., buffered, de-interleaved, decoded to some extent, etc.) to generate a data stream.”) In each instance, buffering is disclosed along with de-interleaving and decoding as actions performed by a decoder module or submodule. Nowhere does the Specification define “decode” to mean “buffer” or “de-interleave.” Patent Owner does not dispute the portion of Petitioner’s construction that defines “decode” to mean “distinguish error correction bits from information bits.” Pet. 14–15. Both parties rely on Patent Owner’s district court infringement contentions, where Patent Owner asserted that the disputed claim limitation is met by the accused products in part because “[a]t a minimum, the ECC bits will be identified, distinguished from, and Resp. 15.7 Neither party directs us to intrinsic evidence to support this definition of “decode.” Nevertheless, because this portion of Petitioner’s proposed construction is undisputed at this stage of the proceeding, we adopt it for purposes of our Decision. Accordingly, we construe the phrase “decode the received encoded data” to mean “distinguish error correction bits from information bits in the received encoded data.” Although the term may not be limited to this meaning, no other acceptable definition has been presented on this record. At this stage of the proceeding, we do not construe the phrase “to generate a plurality of partially decoded data streams” because neither party has proposed a construction for that portion of the claim language.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 18, 2022 · IPR2021-00769 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 2, 7–13, and 15 are unpatentable as obvious over Brockners and Lasserre, both alone and in further view of RFC 3386.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose a definition for a POSITA but contends that “Petitioner fails to prove unpatentability even if the Board were to apply Petitioner’s proposed definition.” PO Resp. 2. We adopt and apply Petitioner’s definition of the level of ordinary skill in the art at the time of the claimed invention because, based on the record, this proposal appears to be consistent with the ’656 patent, the asserted prior art, and is supported by the testimony of Dr. Weissman. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “no express constructions are necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 20. Although Patent Owner also does not provide any express construction, in its Sur-Reply, Patent Owner contends that, according to the recited language of claim 12, the “learning” step “must be based on communication between the first and third provider edge nodes,” and “such communication must occur while the first provider edge node is functioning as the working node.” See PO Sur-Reply 1. Further, Patent Owner contends that “all challenged claims require the ‘first provider edge node’ to be ‘a protection node’ (as opposed to a ‘working node’) when it sends the flush request.” Id. at 4. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). Rather, we address the “learning” step and “first provider edge node” based on the parties’ explicit arguments with respect to the prior art references of Brockners and Lasserre.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As Petitioner explained during oral arguments, in Lassere, once provider edge router PE2 receives the packet, it will know that it received it over tunnel 201 and that the return path for tunnel 201 is tunnel 102, and it then creates a MAC address entry in the MAC table to reach M1 over tunnel 102. Tr. 8:13–16 (“a table that says, look, if I want to reach M1, I know I can reach it over tunnel 102, that that’s the tunnel that can take me to that MAC address 1”); see also Ex. 1005, 12. Petitioner contends that “[t]he PE learns both the MAC address and a tunnel for associating to the equipment,” and that “[t]he claims require learning a MAC address for the first customerpremises equipment,” wherein “we can see that the entry stored a MAC address, M1, that is for the first customer-premises equipment, A1.” Tr. 12:7–11. On the complete record before us, we find availing Petitioner’s contention that N-PE 3 possesses MAC address entry M1 that is for first customer-premises equipment, A1, by associating M1 with tunnel 102, identifying A1 as the source behind N-PE 1. As Petitioner points out, similar to Lasserre, the description of “MAC address learning that the [’656] patent consistently gives” is, with a broadcast message received by a provider edge node, the provider edge node “associates the source MAC address within [the broadcast message] with a tunnel that is leading to that equipment.” Tr. 11:2–5; see also Ex. 1001, 2:67–3:6. Having reviewed Petitioner’s arguments and supporting evidence in the complete record, notwithstanding Patent Owner’s arguments to the contrary, we determine Petitioner has demonstrated by a preponderance of the evidence that the combination of Brockners and Lasserre teaches 1) “a third provider edge node possessing a media access control (MAC) address entry for the first provider edge node,” as recited in claim 1; and 2) “leading, with the third provider edge node, a first media access control (MAC) address for the first customer premises equipment, based on said communicating,” as recited in claim 12.” slip op. at 23
Patent outcomesUS 8,284,656 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,284,656 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 16, 2022 · IPR2021-00768 · APJ Thu A Dang · IPR · Final written decision
Claims 17–19, 21–23, 25, and 26 are unpatentable: Passint anticipates claims 17, 18, 21, and 22; Passint and Chen render claims 19, 21, and 23 obvious; Dally renders claims 17, 18, 21, and 22 obvious …
RulingsFinal written decision- 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). Relying on the declaration of Dr. Weissman, Petitioner contends that a person of ordinary skill in the art (“POSITA”) related to the ’998 patent would have “at least a master’s degree in computer science or electrical engineering in the field of computer networking,” wherein “[a]dditional graduate education could substitute for professional experience, or significant experience in the field of computer networking could substitute for formal education.” Pet. 16–17 (citing Ex. 1003 ¶ 33).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“FIG. 4.” Pet. Reply 7. That is, even if “the parties do not dispute that Figure 1 applies to the Passint invention as a whole” (PO Sur-Reply 15), Petitioner has met its burden of establishing anticipation if it shows that each and every element in claim 17 is found in the single embodiment set forth in Figure 4 of Passint. Thus, although Patent Owner argues that “Petitioner never explains why Passint’s nodes 22, 24, and 26 are alleged to be router cluster nodes in a cluster router” (id.), Petitioner nevertheless can establish anticipation by showing that Figure 4 of Passint discloses router cluster nodes in a cluster router, as recited in claim 17. As Petitioner persuasively points out, contrary to Patent Owner’s contention, “the Petition does not cite Passint’s FIG. 1 as disclosing the ‘router cluster node,’” but rather, “specifically refers to Passint’s router chips 50/150 as disclosing the ‘router cluster node’ of the ‘router cluster’ of Passint’s FIG. 4.” Pet. Reply 12.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“view of Chen renders the limitations as recited in claims 19, 21, and 23 as obvious, contending that it would have been obvious to combine the references and citing Dr. Weissman’s testimony for support. Pet. 37–46 (citing Ex. 1004, 5:52–58, 11:9–16, 12:1–4, 12:39–43, 13:21–28; Ex. 1008, 6, 7, 13; Ex. 1003 ¶¶ 116–136).” slip op. at 22
Patent outcomesUS 7,483,998 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,483,998 - Cisco Systems, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 16, 2022 · IPR2021-00960 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 2, 4, 5, 7–10, 12, 14–17, and 19 as obvious over Mateski; claims 6, 13, and 20 over Mateski and Abdo; claims 3, 11, and 18 over Mateski and …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent, and two years of professional experience relating to communication networks,” as well as “a working knowledge of the communication network art that is pertinent to the ’733 patent.” Pet. 11 (citing Ex. 1003 ¶ 20). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Nader Mir. Ex. 1003 ¶ 20. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 6. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Patent Owner’s interpretation. The ’733 patent states that “a session is set up using the probe session identifier,” and “[t]he session can include setting up any of a variety of different services including a call.” Ex. 1001, 5:10–13 (emphasis added). The ’733 patent’s use of the phrase “can include” indicates that the described features of a session are optional, not requirements. Id.; see Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1137 (Fed. Cir. 2011). This is consistent with the other portions of the ’733 patent cited by Patent Owner, which similarly indicate that setting up a service or call are examples of a session, not requirements. Ex. 1001, 6:31–34 (“UE 508 sends signaling messages, such as for setting up a call or establishing a service”) (emphasis added); id. at 9:4–7 (“related to a session such as a call or a service”) (emphasis added). Because Patent Owner’s interpretation is not consistent with the written description, we decline to adopt it. Nonetheless, as discussed below, even if we were to assume that the term “session” means “setting up any of a variety of different services including a call,” the asserted prior art teaches the disputed claim limitation. See Section II.D.2.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner argued at the oral hearing that Petitioner relies on Mateski’s test code and unique tracking number together as teaching the probe session indicator. Tr. 14:10–16:6. And, according to Patent Owner, Petitioner does not show that Mateski teaches determining the presence of both the test code and the unique tracking number in the test packet. Id. Patent Owner’s argument is not timely because it was presented for the first time at the oral hearing. See Tr. 16:2–14; PO Resp. 9–13; PO Sur-reply 2–7; Consolidated Trial Practice Guide, 85–86 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“TPG”) (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”). Moreover, Patent Owner’s argument is not persuasive. Petitioner asserts in the Petition that “Mateski’s test code separately and taken together with the assigned unique tracking number corresponds to ‘a probe session indicator.’” Pet. 26 (emphasis added); see also id. at 31–32 (“a packet with a loop-back test session indicator (e.g., test code separately and together with an assigned unique tracking number), which corresponds to the claimed ‘probe session indicator.’”). In other words, Petitioner relies on Mateski’s test code by itself as teaching the claimed probe session indicator. Id. at 26, 31–32. And, as discussed above, Mateski expressly teaches “determin[ing]” if the test code is “present” in the test packet. Ex. 1005, 3:2–5, 7:60–61.” slip op. at 11
- BurdenUnpatentable
“Patent Owner’s argument is unavailing. Petitioner and Dr. Mir each identifies specific portions of Mateski that teach determining the presence of the test code in the test packet. Pet. 32 (citing Ex. 1005, 2:66–3:5, 7:60–61); Ex. 1003 ¶¶ 101, 103 (citing Ex. 1005, 2:66–3:5, 7:60–61). For example, Mateski states that “network node 120 could read the header of the first packet to determine if the first test code is present by checking if a single bit representing the first test code is set to one.” Ex. 1005, 3:2–5 (emphasis added); see also id. at 7:60–61 (“Node 320 reads the packet header to determine whether it contains a test code.”). Patent Owner does not address the specific portions of Mateski cited by Petitioner and Dr. Mir. See PO Resp. 9–11; PO Sur-reply 2–5. Patent Owner argued at the oral hearing that Petitioner relies on Mateski’s test code and unique tracking number together as teaching the probe session indicator. Tr. 14:10–16:6. And, according to Patent Owner, Petitioner does not show that Mateski teaches determining the presence of both the test code and the unique tracking number in the test packet. Id. Patent Owner’s argument is not timely because it was presented for the first time at the oral hearing. See Tr. 16:2–14; PO Resp. 9–13; PO Sur-reply 2–7; Consolidated Trial Practice Guide, 85–86 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“TPG”) (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”). Moreover, Patent Owner’s argument is not persuasive. Petitioner asserts in the Petition that “Mateski’s test code separately and taken together with the assigned unique tracking number corresponds to ‘a probe session indicator.’” Pet. 26 (emphasis added); see also id. at 31–32 (“a packet with a loop-back test session indicator (e.g., test code separately and together with an assigned unique tracking number), which corresponds to the claimed ‘probe session indicator.’”). In other words, Petitioner relies on Mateski’s test code by itself as teaching the claimed probe session indicator. Id. at 26, 31–32. And, as discussed above, Mateski expressly teaches “determin[ing]” if the test code is “present” in the test packet. Ex. 1005, 3:2–5, 7:60–61. Further, Petitioner shows that Mateski also teaches determining the presence of the unique tracking number in the test packet. Specifically, Mateski teaches that the network nodes read the unique tracking number from the header of the test packet. Pet. 32; Ex. 1005, 7:54–58 (“the test packet could be used to store the . . . unique tracking number . . . to be read by the nodes 320 and 330.”). And the evidence of record indicates that a person of ordinary skill in the art would have known that because the network nodes read the unique tracking number from the test packet, the network nodes determine that the unique tracking number is present. Pet. 32; Ex. 1003 ¶ 104. Patent Owner asserts that Mateski’s “act of reading” the test code does not “in and of itself constitute[] a determination” of its presence in the test packet, but Patent Owner does not identify specific evidence to support that assertion. PO Sur-reply 4. For the foregoing reasons, Petitioner has shown that Mateski teaches determining the presence of the probe session indicator.” slip op. at 11
Patent outcomesUS 8,665,733 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,665,733 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 13, 2022 · IPR2021-00696 · APJ John D Hamann · IPR · Final written decision
Claims 1–28 are unpatentable: claims 1, 2, 6–16, and 20–28 as obvious over Caglar and Duvivier, and claims 3–5 and 17–19 as obvious over Caglar, Duvivier, and Youn.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’960 patent as one who “would have had a Bachelor of Science degree in Electrical Engineering or an equivalent field, with at least two years of academic or industry experience in video data transmission or comparable industry experience”; and that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art,” and that “[s]imilarly, more experience can substitute for formal education.” Dec. on Inst. 18–19 (quoting Pet. 12 (citing Ex. 1003 ¶ 36)). Patent Owner does not dispute our adoption of Petitioner’s definition, and does not provide its own definition for the level of ordinary skill at the time of the invention of the ’960 patent. See PO Resp. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’960 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“explicitly provides a definition for the term “virtual reference data.” See Pet. 14 (citing Ex. 1001, code (57), 2:17–22); PO Resp. 8–9 (citing same). Namely, the ’960 patent’s Specification states the following: [A] “virtual reference,” as used herein, is defined as a group of pixels (e.g., a block) that is used as reference material for encoding portions of the video signal (e.g., a motion-compensated inter-predicted block), but that does not comprise or represent any portion of the actual video sequence to be displayed. Ex. 1001, 2:17–22; Pet. 14 (citing same); PO Resp. 8–9 (citing same). The parties agree that “virtual reference data” should be given this express definition. Pet. 14; PO Resp. 8–9. We agree with the parties and conclude that “virtual reference data” has the meaning provided by this definition. Ex. 1001, 2:17–22. And although the parties do not explicitly address that the Specification defines “virtual reference” without including the word “data,” we agree with the parties that this same definition applies for the claim term “virtual reference data.” See id.; Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find unavailing Patent Owner’s argument that Caglar fails to teach this limitation because “Ca[gl]ar’s virtual frame is defined on the basis of a version of a complete frame, which is not ‘a portion of the original video signal,’ as required by the claim language.” PO Resp. 9–10 (citing Ex. 1005 ¶ 105); see also PO Sur-reply 1–2 (making same argument). Simply put, the language of this limitation recites “generating virtual reference data based on a portion of the original video signal.” Ex. 1001, 12:1–2 (emphasis added). Notably, the limitation recites “based on,” rather than “from” a portion of the original video signal, for example. Id. As we concluded in our institution decision, the plain meaning of the claim language “based on” is broad enough to cover scenarios, such as taught by Caglar, where the virtual reference data is generated indirectly from the original video signal. See Dec. on Inst. 35; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (finding “the name of the game is the claim”); see, e.g., Ex. 1005 ¶¶ 103, 105, 201, 243, code (57). Regardless, as we discuss above, Caglar also teaches generating a virtual frame directly by decoding the encoded current frame, which is an encoded portion of the original video signal. Ex. 1005 ¶ 243, Fig. 18.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find persuasive Dr. Lavian’s testimony that one of ordinary skill in the art “would have understood that the data present in the bit-stream would include header information that indicates the use of one or more virtual reference frames.” Ex. 1003 ¶ 134. We find that this testimony is consistent with Caglar’s teachings, rather than being conclusory as Patent Owner argues. Ex. 1005 ¶¶ 246, 248, 276, Fig. 19; PO Resp. 15; PO Sur-reply 12–13. And we find that Caglar teaches that “[t]he identified reference may be a complete frame or a virtual frame and so the decoder determines whether a virtual reference is to be used (step 228).” Id. (emphasis added). Hence, we find that Caglar teaches to one of ordinary skill in the art identifying the indication (i.e., the particular value in the header) of a virtual reference frame in the bit-stream. Ex. 1005 ¶¶ 246, 248, 276, Fig. 19; Ex. 1003 ¶ 134.” slip op. at 29
Patent outcomesUS 8,179,960 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,179,960 - PTAB · Oct 5, 2022 · IPR2022-00516 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–3 and 10 on all five grounds: anticipation by Perahia, Li, or Wax, and obviousness over Li or Wax with Perahia.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that “estimating a second radio channel . . . over said pilot interval” requires that the second radio channel be estimated over the same pilot interval as estimating a first radio channel was performed. See Prelim. Resp. 7. Nevertheless, given that a pilot interval is “predetermined time period . . . for supervisory purposes” (Ex. 1001, 7:41–53), we find that the time for estimating the first and second radio channels need not be exactly co-extensive in order to meet the “same pilot interval” limitation. For example, the pilot interval could be a longer predetermined period of time encompassing (1) the beginning and ending of estimating the first radio channel, then (2) some other activity such as “control, equalization, continuity, synchronization, or reference,” and then (3) the beginning and ending of estimating the second radio channel—so long as all of these are activities are for supervisory purposes. This comports with the Specification of the ’096 patent, which merely mentions “pilot interval” as the period of time over which the SMDA module estimates the first and second radio channels from the access point to the respective first and second mobile stations. That is, the Specification of the ’096 patent does not limit “pilot interval” to a time period for simultaneous and co-extensive estimation of first and second radio channels, as Patent Owner appears to be advocating. Therefore, for the foregoing reasons, based on the present record, we determine the term “said pilot interval” in the phrase “estimating a second radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Instead, the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. The parties are invited to address this claim construction issue during trial.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we do not agree with Patent Owner’s contention that, because Perahia discloses transmitting first channel training information “in a first channel training period,” and allowing transmission of second channel training information “during a second channel training period,” Perahia fails to show that the estimating of a second radio channel takes place over the same interval over which the estimating of the first radio channel occurred. Prelim. Resp. 6–7. As discussed above, “over said pilot interval” as recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Relying on Dr. Akl’s testimony, Petitioner contends that Perahia transmits channel training information in a “‘channel training period’— which is a pilot interval.” Pet. 23 (citing Ex. 1004, 3:4–12; Ex. 1003 ¶ 87). Dr. Akl testified that, like the ’096 patent, Perahia discloses channel estimation. Ex. 1003 ¶¶ 84–85. According to Dr. Akl, Perahia incorporates U.S. Patent No. 7,352,688 (Ex. 1008) by reference, which discloses antenna elements 1 and 2, wherein “[d]uring a first portion of the channel training period, one antenna element transmits a guard interval 504 followed by two long symbols 506 while the other antenna element is quiet,” and “[t]hen the first element goes into a quiet period.” See Ex. 1003 ¶ 87 (citing Ex. 1004, 8:61–64, 9:4–5, 9:29–30, Figs. 7–8; Ex. 1008, 6:26–45). That is, Dr. Akl testified that Perahia discloses a “pilot interval” that includes a “first portion” for estimating a first channel and another portion for estimating a second channel in a channel training period. Id. (emphasis added). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Perahia discloses “estimating a first radio channel from said access point to said first mobile station over a pilot interval,” and “estimating a second radio channel from said access point to said second mobile station over said pilot interval,” as recited in claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Having reviewed Petitioner’s arguments and supporting evidence in the present record, we are preliminarily persuaded by Petitioner’s contention that a POSITA would have found it obvious to combine the teachings of Li and Perahia for enhancing throughput through the use of SDMA, as testified by Dr. Akl. Pet. 38 (citing Ex. 1003 ¶¶ 110, 113). Accordingly, we determine Petitioner has made a sufficient showing that the combination of Li and Perahia teaches the subject matter of dependent claim 10.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted on all grounds and on all claims challenged in the Petition, i.e., as to claims 1–3 and 10 of the ’096 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Perahia; 2) claims 1–3 are unpatentable under 35 U.S.C. § 102 as anticipated by Li; 3) claim 10 is unpatentable under 35 U.S.C. § 103 as obvious over Li and Perahia;” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,512,096
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.