• Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Institution denied
  PTAB · Dec 3, 2025 · PGR2025-00056 · APJ Steven M Amundson · PGR · Institution

  Institution was denied because Petitioner did not show it was more likely than not that claims 1–20 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, and for the reasons explained below, we determine that Petitioner has failed to demonstrate that it is “more likely than not” that at least one of the claims challenged in the Petition is unpatentable. Hence, we deny the Petition and do not institute a post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 10 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 39. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 22. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’149 patent as well as the asserted references. See, e.g., Ex. 1005, 1:35–6:56, 42:44–46:28, code (57); infra §§ III.E.1–III.E.2, III.G.1–III.G.2, III.H.1.” slip op. at 25

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

    “4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post-grant review. As Petitioner recognizes, the ’149 patent defines many of the claim terms Petitioner discusses in the “Claim Interpretation” section of the Petition. See Pet. 14–16. For instance, the patent defines “antenna rectangle” as “the orthogonal projection of the antenna box along the normal to the face with largest area of the antenna box.” Ex. 1005, 14:21–24. Further, the patent defines “complexity factor F21” and “complexity factor F32” consistent with the independent claims. See id. at 17:16–21, 17:49–61, 18:8–18, 19:12–25, 20:5–17, 42:62–43:25, 44:5–30, 45:8–46:3. E. Alleged Obviousness over Dou and Ciais-Multiband: Claims 7–9, 11–14, 16, 17, 19, and 20 Petitioner contends that claims 7–9, 11–14, 16, 17, 19, and 20 are” slip op. at 28

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

    “Petitioner does not explain why an ordinarily skilled artisan who used Ciais-Quadband’s antenna for Dou’s two antennas 206 and 208 would have departed from the commonly accepted rule of thumb and Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency to the extent needed to implement the proposed combination, i.e., with only about 55% of the preferred spacing between antennas. See Pet. 60–69; Ex. 1007 ¶¶ 172–187. Hence, based on the current record, Petitioner does not establish sufficiently for purposes of institution that an ordinarily skilled artisan would have been motivated to combine Ciais-Quadband’s teachings with Dou’s teachings in the way Petitioner proposes. Further, the addition of two Nakano InvFL antennas extending from the ground plane both above and below the PCB does not remedy the insufficient spacing between “the swapped-in Ciais-Quadband antennas.” Ex. 2010 ¶ 67.” slip op. at 69

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 12,095,149
• Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01480 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution under § 314(a), citing the Fintiv factors, including the earlier trial date and the petition’s not particularly strong merits, for claims 1–3, 10–13, 17, and 20–22.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 4, 8 (quoting Ex. 2001, 5). We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the district court. Ex. 2001; Ex. 2007; Prelim. Resp. 8–9. The fact that the time-to-trial statistic is earlier than the scheduled trial date confirms that the scheduled trial date is credible and should be given weight. From this evidence, we are persuaded that we should rely on the scheduled trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “1. Analysis of Petitioner’s Challenges a) Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces. Additional education can substitute for less work experience, and vice versa. Pet. 14; see Ex. 1003 ¶ 41. Patent Owner does not dispute or comment on this proposal or propose an alternate level of ordinary skill in the art. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the evidence of record, including the asserted prior art and ’103 patent.” slip op. at 14

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

    “same standard used in district courts, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither Petitioner nor Patent Owner asserts that any claim term requires claim construction (Pet. 14–15; Prelim. Resp.) and we do not discern that any claim term requires construction to arrive at our conclusions herein. c)” slip op. at 14

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

    “2. Conclusion Regarding the Merits The discussion above identifies weaknesses in the Petition that we have considered in our evaluation of Fintiv factors. While we do not make a determination regarding whether the Petition shows that there is a reasonable likelihood of prevailing were we to institute, for the reasons given, we determine that this Petition does not present particularly strong merits. G. Weighing the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 22

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 9,852,103
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied

    “partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15

  • Skill levelDecided for patent owner

    “Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,856,520
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01481 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), based on its Fintiv analysis, including the earlier district court trial date and weakness in the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “date in the Lenovo Group case as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors discretionary denial of the Petition.” slip op. at 11

  • Skill levelSkill level board ownOther

    “patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces.” Pet. 6. Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications.” Prelim. Resp. 6–7. The differences between the definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any specialized constructions are necessary.” Pet. 6. Patent Owner “does not disagree.” Prelim. Resp. 6. However, Petitioner’s challenge raises an implicit claim construction issue not addressed in the Petition that we discuss in our analysis below.” slip op. at 15

  • BurdenNot reached

    “example, claim 11 recites “receiving a synchronization symbol by a receiver indicating a packet type, each packet type having a different synchronization symbol.” Ex. 1001, 37:53–55. The other independent claims challenged in the Petition are similar in their recitation of a “synchronization symbol.” See id. at 37:9 (claim 1), 38:26–27 (claim 19). Petitioner argues this limitation is disclosed by Auld in view of MPEG-2 Part. 1. Pet. 15–16. Citing Figure 5 of Auld, reproduced in Section IV.C.1, supra, Petitioner asserts that “[t]he ‘sync codes’ in Auld consist of sequences of symbols that are used for synchronization, and therefore qualify as synchronization symbols.” Id. at 17. Patent Owner responds that “what the Petitioners identified as a ‘synchronization symbol’ [in Auld] is in what they have identified as a ‘packet of (or having) symbols.’” Prelim. Resp. 1. In contrast, “[i]n the specification and claims of the ’798 Patent, the claimed ‘synchronization symbol’ is separate from, and precedes, the claimed ‘packet of (or having) symbols.’” Prelim. Resp. 1. In disputing Petitioner’s identification in Auld of a synchronization symbol as claimed, Patent Owner points to Figure 9A of the ’798 patent (reproduced in Section II.C, supra), showing synchronization primitives 901 and 905 as separate from and transmitted before packets 902 and 907, respectively. Id. at 4. Patent Owner also relies on the description of the Figure 9A embodiment in the ’798 patent specification. Id. at 3–5. That description places transmission of the synchronization primitive encoded with the patent type before the control packet in the transmission sequence:” slip op. at 18

  Claim constructionDiscretionary denial
  Patents in suitUS 7,746,798
• HP Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 16, 2025 · IPR2024-01429 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution on all challenged claims, exercising § 314(a) discretion based on the Fintiv factors, especially the earlier district court trial date and weaknesses in the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The District Court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 17. We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the District Court. Ex. 2002; Ex. 2008; Prelim. Resp. 17–18. The fact that the time-to-trial statistic is earlier than the trial date set by Judge Gilstrap confirms that the schedule set by the District Court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 8

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

    “integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1, 2, 6, 7, 23, 25, 31, 53, 68, 70–72, 74, and 75 of the ’307 patent. V. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29

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

    “The parties each raise facially valid points based on the claim language. Petitioner has the burden to show “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104 b(3). Petitioner does not explain how, under its broad construction, the decoder “decodes the encoded data to recover application and control bits in accordance with a line code.” That is, if the encoding does not encode both “application and control bits,” then how can decoding “recover” both under Petitioner’s claim construction? It is not clear on this preliminary record whether the specification supports Petitioner’s broad claim construction. For this reason, Petitioner’s showing based upon the broad claim construction outlined above is not “particularly strong.” See Fintiv at 14–15. As discussed further below, Petitioner also presents a showing under Patent Owner’s more narrow construction. 3.” slip op. at 15

  • Skill levelSkill level board ownOther

    “Prelim. Resp. 6 (citing Ex. 2001 ¶ 15). Relying on its declarant, Dr. Wolfe, Petitioner proposes materially the same level. Pet. 5 (citing Ex. 1003 ¶¶ 26– 29). Based on a review of the record, we adopt the parties’ proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’307 patent.” slip op. at 14

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 7,187,307
• Fortinet, Inc. v. Croga Innovations Ltd.Institution denied
  PTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.

  RulingsInstitution decision

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

    “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 grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “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 virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,601,780
• Ubiquiti Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Mar 7, 2025 · IPR2024-01290 · APJ Russell E Cass · IPR · Institution

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

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed patent owner constructionDecided for patent owner

    “interview to incorporate prosecution dependent claim 2 into prosecution claim 1 and cancel prosecution dependent claim 3. See § I.F, supra. We determine that this agreement and the corresponding amendment constitutes a clear disavowal of subject matter that supports Patent Owner’s construction. Prosecution claim 2 required that the second communication frame follow the first communication frame after a SIFS (corresponding to Figure 5 of the ’122 patent), while prosecution claim 3 required that there be a SIFS and an intervening response between the first and second communication frames (corresponding to the embodiments of Figures 3 and 4 of the ’122 patent). Before the amendment, original claim 1 included both of these embodiments, but the incorporation of prosecution claim 2 into prosecution claim 1 and the cancellation of prosecution claim 3 limited issued claim 1 to only the embodiment of prosecution claim 2. Because Larsson disclosed an intervening response to the first communication frame before the second communication frame, the clear import of the amendment was to limit claim 1 to the embodiment where the second communication frame follows immediately after the SIFS in order to distinguish claim 1 from Larsson. Indeed, in the Reasons for Allowance, the examiner explained that claim 1 distinguishes over the prior art (including Larsson) because “[t]he prior art of record fails to teach or fairly suggest ‘receiv[ing] the second communication frame after a short inter frame space (SIFS) that follows the first communication frame,’” as added from prosecution claim 2. Ex. 1002, 47. If, as Petitioner argues, prosecution claim 2 was broad enough to cover the embodiment of prosecution claim 3, then the amendment would have served no apparent purpose. Thus, we agree with Patent Owner that “[t]here is no other plausible explanation for why, when faced with Larsson’s disclosure of an intervening response, the Examiner initiated an interview to incorporate the SIFS limitation of dependent claim 2 into claim 1, and cancel dependent claim 3, which, like Larsson, included an intervening response.” See Prelim. Sur-reply 1–2.” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “of the alleged invention would have had “(1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications standards and/or product development.” Pet. 26 (citing Ex. 1003 ¶¶ 25–26). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not advance a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp.; Prelim. Sur-reply. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’122 patent and the asserted prior art of record.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner fails to show that Gu teaches that “the second communication frame follows after a short inter frame space (SIFS) after the first communication frame with the transmit announcement indication.” Ex. 1001, 7:64–67. As discussed above, we construe this limitation to require that “the second communication frame follows substantially immediately after the first communication frame (without any intervening response to the first communication frame),” as Patent Owner proposes. See § II.A, supra. Petitioner has not shown that Gu meets this construction because Gu includes an intervening response between the first and second communication frames. Consequently, Petitioner has failed to demonstrate a reasonable likelihood that claim 1 is unpatentable over the combination of Gu and Trainin.” slip op. at 31

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

    “review, under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4 (2024). 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; see also 37 C.F.R § 42.4(a) (“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 demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review on any grounds set forth in the Petition.” slip op. at 2

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,594,122
• Charter Communications, Inc. v. Iarnach Technologies, Inc.Institution denied
  PTAB · Feb 19, 2025 · IPR2024-01286 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “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)); see also Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that Petitioner’s proposal reflects an education level and experience that is too low. Prelim. Resp. 37. Therefore, Patent Owner proposes that a person of ordinary skill in the art “would have at least a bachelor’s degree in electrical engineering, computer science, or a similar degree plus at least two years of experience in optical networks.” Id. (citing Ex. 1001, 1:7–10; Ex. 2002 ¶¶ 18–24). Patent Owner further contends that “[a] higher level of experience would compensate for a lower education and vice versa.” Id. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’378 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 8

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

    “There is no dispute between the parties as to this term that would affect our Decision. Therefore, we do not need to explicitly construe it for purposes of this Decision. 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “On this record, we determine that Petitioner has not sufficiently shown, for purposes of institution, that the combination of references teaches “using the common key to encrypt multicast service data of all different multicast services in a same bearer channel and then sending encrypted data,” as recited in claim 1. To teach this limitation, Petitioner relies on disclosures from RFC 4601 and RFC 11127 purporting to show that communications to a multicast group can be drawn from different sources. Pet. 28–31. As set forth above, Petitioner argues that “[d]ata from . . . different sources constitutes multicast service data of different multicast services.” Id. at 32 (citing Ex. 1003 ¶ 91). Therefore, Petitioner’s argument 7 We tend to agree with Patent Owner that Petitioner’s reliance on RFC 1112’s disclosure that “[a] host need not be a member of a group to send datagrams to it” does not seem to support that “[a]ny number of sources may direct such IP datagrams to [a] single destination address.” Prelim. Resp. 51–52; Pet. 31; Ex. 1003 ¶ 89. However, there is no dispute that RFC 4601 teaches that communications to a multicast group can be drawn from different sources. See Pet. 31; Prelim. Resp. 51. presumes that by showing that RFC 4601 and RFC 1112 teaches multicast communications from different sources, Petitioner has also shown that the multicast communications are from different multicast services. We disagree.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,942,378
• Cisco Systems, Inc. v. Croga Innovations Ltd.Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01196 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show that Delco teaches the internal firewall limitations required by independent claims 1 and 11.

  RulingsInstitution decision

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

    “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 grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “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 virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9

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

    “Petitioner submits that, “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 12. Patent Owner argues that with regard to the internal firewall limitations, “Petitioner’s mappings of the asserted art to the limitations . . . rely on implicit constructions of those terms without any support in the ’780 specification.” Prelim. Resp. 2. However, Patent Owner does not propose any express claim construction. Id. No need exists to expressly construe any claim terms to resolve the parties’ dispute. 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

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “7 Patent Owner criticizes the Shenoy Declaration as related to the internal firewall limitations and argues that this testimony should be given little weight: The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 38-41 with EX1003 at ¶¶90-96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 5 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,601,780
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Asus Technology Licensing Inc.Institution denied
  PTAB · Dec 16, 2024 · IPR2024-00997 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution of IPR challenging claims 1–10, exercising its discretion under § 314(a) because the Fintiv factors favored denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 9

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

    “and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in design, development, and/or testing of cellular networks.” Pet. 15–16 (citing Ex. 1003 ¶¶ 43–44). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 15

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

    “The parties argue that we need not address any claim-construction issues for our analysis, and we agree. See Pet. 15; Prelim. Resp. 25. 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 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,798,754

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.