- AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision
The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26
Patent outcomesUS 10,841,958 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,841,958 - Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentablePTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.
RulingsFinal written decision- Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable
“A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- ExcludeMotion to exclude, deniedNot reached
“Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34
- Strike new argumentNew argument disregardedGranted
“As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35
Patent outcomesUS 8,472,792 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Unified Patents Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); 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). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23
Patent outcomesUS 8,139,651 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,139,651 - Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentablePTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision
The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.
RulingsFinal written decision- BurdenDecided for patent owner
“as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner
“as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16
Patent outcomesUS 7,857,455 not shown unpatentable§ 102 anticipationPatents in suitUS 7,857,455
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.