- Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 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 the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00704 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because neither Ground 1 nor Ground 2 showed a reasonable likelihood of proving any challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition . . . 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 (2018). For the reasons below, we determine the information presented in the Petition does not show a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’580 patent, and we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“interpretations are appropriate. Controlling law requires construing claims in an inter partes review using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and 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) (2021). “In determining the meaning of [a] disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). The Petition does not even purport to apply this controlling law with its Ground 1. In fact, Petitioner acknowledges that its Ground 1 does not apply a “proper” claim construction, describing Ground 1 in contrast to Ground 2 as follows: “Ground 1 is essentially based on what we read their infringement contentions to be, . . . Ground 2 [applies] what we view as the proper construction of the patent.” Ex. 1022, 7:17–8:16. Accordingly, based on this record, we determine Petitioner has not supported the claim interpretations on which its Ground 1 relies, and Petitioner therefore has not shown a reasonable likelihood that it would prevail in its challenge asserted as Ground 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“But Petitioner states that in the combination presented in Ground 2, “a skilled artisan would have set the current limit threshold based on the current-handling capability of the VTM to protect the VTM from over-current.” Pet. 49–50. “In this circumstance, the PRM would never reach an over-current condition. Rather, the PRM would operate within its normal range.” Pet. 50 (citing Ex. 1003 ¶ 144) (emphasis added). But Petitioner’s description of the proposed combination—in which “the PRM would never reach an over-current condition”—cannot be reconciled with Petitioner’s showings for the “over-current” limitations, which require, e.g., “when the resonant converter generates the over-current” (limitation [1c]). For example, for limitation [1c], Petitioner states “when the VTM exceeds its normal operating current, the PRM (with a duty cycle current limiter as taught by Hwang) would reduce its duty cycle, which would reduce its output voltage and output current, and thus reduce the input voltage and current to the VTM.” Pet. 55–56 (citing Ex. 1003 ¶ 158). But Petitioner and its declarant both state that in the combination proposed in Ground 2, “the PRM would never reach an over-current conduction.” Pet. 50; Ex. 1003 ¶ 144; see Pet. 59 (addressing similar language in limitation [1c]), 61 (addressing limitation [13c]), 63 (addressing limitation [17d]). Petitioner does not explain how those positions can be reconciled, nor does Petitioner adequately explain, much less support, a claim interpretation that would be satisfied by a proposed combination in which the resonant converter never generates an over-current. Accordingly, we determine Petitioner has not shown a reasonable likelihood that it would prevail in the challenges presented as Petitioner’s Ground 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “(1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in the field of power engineering.” Pet. 11 (citing Ex. 1003 ¶¶ 41–42). Patent Owner does not specifically address the level of ordinary skill. At this stage, Petitioner’s proposal appears consistent with the problems and solutions in the ’580 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 6
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,711,580 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 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 the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 24, 2024 · IPR2024-00319 · APJ Russell E Cass · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of success on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not established a reasonable likelihood that any of the challenged claims are unpatentable. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Almeroth, Petitioner argues that one of ordinary skill “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field.” Pet. 6 (citing Ex. 1005 ¶ 41). Petitioner further states that “[r]elevant work experience would include experience with cellular telecommunications and networking, radioaccess network architectures, protocols, and signal propagation in wireless networks,” and that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not set forth a proposed level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and not disputed by Patent Owner as reasonable and consistent with the prior art. See Okajima v Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- BurdenNot shown unpatentable
“Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Under these facts, Petitioner has failed to set forth a sufficient basis to support the claim construction it relies on and, consequently has failed to establish a reasonable likelihood that its unpatentability arguments, which are based on that construction, have merit. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. However, we note that our determination does not rely on discretionary denial or exclusively on Rule 42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a reasonable likelihood that limitation [1.3] is obvious based on Sesia. Where a petitioner specifically relies on a particular construction of a claim term in order to demonstrate unpatentability, particularly a construction different from the ordinary meaning, that claim construction is part of the unpatentability analysis, and the petitioner must provide a sufficient basis to support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir. 2023) (“In determining whether a claim is invalid as obvious, we compare the prior art to the claim language, and if necessary, after the claim language has been properly construed when the meaning or scope is in dispute.”). Here, Petitioner has not done so because: (1) Petitioner does not rely on the plain and ordinary meaning of the term, and its own expert testifies that its construction is contrary to the plain and ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that the construction it relies on is correct; and (3) Petitioner and its expert assert that the proffered construction is inconsistent with the ’347 patent Specification.” slip op. at 20
Claim constructionDiscretionary denialcites KSRPatents in suitUS 8,891,347 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. 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)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 10, 2024 · IPR2024-00316 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 10–13, 15, and 17 were obvious over Gaal or Gaal and Khoryaev.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c) Analysis Based on the present record, we agree with Patent Owner that Gaal does not teach or suggest the claim 10.3 and 10.4 requirements: determine, based on the quality status of the first frequency spectrum resource, that the first frequency spectrum resource is a sub-optimal resource, for the uplink channel and the downlink channel, relative to other frequency spectrum resources that are available for use by the wireless base station; and in response to the determination that the first frequency spectrum resource is the sub-optimal resource, assign the first frequency spectrum resource to a shared resource pool. Ex. 1001, 18:64–19:6. Petitioner asserts that flexible subframes are sub-optimal because they can be more prone to interference than fixed subframes. Pet. 35 (citing Ex. 1004 ¶ 76; Proctor Decl. ¶ 165). But this simply is the result of the fact that a subframe in one base station cell can be handling uplink while a corresponding subframe in an adjacent base station cell is handling downlink. Proctor Decl. ¶¶ 166–168. There is nothing in Gaal to indicate that a subframe is designated as flexible, or created to be flexible, as the result of any measurement of quality status. Indeed, as the Petition admits, “Gaal does not specifically provide any criteria for designating a subframe as flexible.” Pet. 63. As discussed above in Section III.D.1, for Release 12 of the LTE standard, an eIMTA feature provides for an embellishment of the seven predefined TDD configurations, in which each configuration assigns certain subframes as fixed and others as flexible. Nor is there any concept in Gaal of a “shared resource pool” to which a flexible subframe is assigned in response to being determined as sub-optimal. Petitioner characterizes the flexible subframes as being assigned to a shared resource pool because they can be allocated to either uplink or downlink. Pet. 38. But this is an inherent property of a flexible subframe — Petitioner does not establish that the flexible subframe is assigned to a shared resource pool or anything else in response to a determination that it is sub-optimal. In addition, as Patent Owner argues, nothing in Gaal teaches determining, based on quality status, that a flexible subframe is sub-optimal for both uplink and downlink. The only quality status measurements disclosed in Gaal are CSI measurements, which relate to downlink but which are useless for uplink. Ex. 1001, 9:8–12; Ex. 1004 ¶ 85. Accordingly, for the reasons set forth above, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claim 10 would have been obvious over Gaal.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“determine, based on the quality status of the first frequency spectrum resource, that the first frequency spectrum resource is a sub-optimal resource, for the uplink channel and the downlink channel, relative to other frequency spectrum resources that are available for use by the wireless base station; and in response to the determination that the first frequency spectrum resource is the sub-optimal resource, assign the first frequency spectrum resource to a shared resource pool. Ex. 1001, 18:64–19:6. Petitioner asserts that flexible subframes are sub-optimal because they can be more prone to interference than fixed subframes. Pet. 35 (citing Ex. 1004 ¶ 76; Proctor Decl. ¶ 165). But this simply is the result of the fact that a subframe in one base station cell can be handling uplink while a corresponding subframe in an adjacent base station cell is handling downlink. Proctor Decl. ¶¶ 166–168. There is nothing in Gaal to indicate that a subframe is designated as flexible, or created to be flexible, as the result of any measurement of quality status. Indeed, as the Petition admits, “Gaal does not specifically provide any criteria for designating a subframe as flexible.” Pet. 63. As discussed above in Section III.D.1, for Release 12 of the LTE standard, an eIMTA feature provides for an embellishment of the seven predefined TDD configurations, in which each configuration assigns certain subframes as fixed and others as flexible. Nor is there any concept in Gaal of a “shared resource pool” to which a flexible subframe is assigned in response to being determined as sub-optimal. Petitioner characterizes the flexible subframes as being assigned to a shared resource pool because they can be allocated to either uplink or downlink. Pet. 38. But this is an inherent property of a flexible subframe — Petitioner does not establish that the flexible subframe is assigned to a shared resource pool or anything else in response to a determination that it is sub-optimal. In addition, as Patent Owner argues, nothing in Gaal teaches determining, based on quality status, that a flexible subframe is sub-optimal for both uplink and downlink. The only quality status measurements disclosed in Gaal are CSI measurements, which relate to downlink but which are useless for uplink. Ex. 1001, 9:8–12; Ex. 1004 ¶ 85. Accordingly, for the reasons set forth above, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claim 10 would have been obvious over Gaal.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“IV. DISCRETIONARY DENIAL OF INSTITUTION Patent Owner argues that we should exercise our discretion to deny institution “in light of parallel district court litigation involving the same patent, the same parties, the same claims, and the Petition’s lead reference.” Prelim. Resp. 2. However, because we are denying institution on the merits, it is unnecessary to determine whether it is appropriate to exercise our discretion to deny institution based on the parallel litigation.8” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 3–4 (citing Proctor Decl. ¶ 42). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner does not challenge that definition.” Prelim. Resp. 9. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,368,361 - PTAB · Jun 5, 2024 · IPR2024-00136 · APJ Russell E Cass · IPR · Institution
The Board denied institution of IPR on challenged claim 1 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Thus, in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis. In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits. Id. at 4–5. In this case, Fintiv factors 1–5 favor denial. Specifically, weighing factors 1–5 in this case, we find that the approximately 8-month delay between the estimated trial date and the deadline for a final written decision in this IPR (factor 2), the progress of and investment made by the parties and the Court in the parallel district court case (factor 3), and the fact that Petitioner is also a party in the District Court Litigation (factor 5) outweigh Petitioner’s stipulation mitigating the concerns about overlap between the two proceedings (factor 4). Additionally, we find that factor 1 is neutral. Thus, we address whether the merits of Petitioner’s case are compelling.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that it is appropriate for us to exercise our discretion under 35 U.S.C. § 314(a) to deny institution in this proceeding. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2
- BurdenNot shown unpatentable
“Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23
Claim constructionDiscretionary denialPatents in suitUS 8,891,347 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128
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.