- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Headwater Research LLCInstitutedPTAB · Dec 17, 2024 · IPR2024-01051 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claim 4, finding a reasonable likelihood that Rao and Jones render it obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner does not allege any particular level of ordinary skill in the art in its Petition, but Petitioner’s expert, Dr. McDaniel, testifies that a person of ordinary skill in the art, at the time of the invention of the ’811 patent, “would have been someone with (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 security,” and that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 24.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Rao and Jones to arrive at the invention of dependent claim 4 (which includes the features of independent claim 1) and would have had a reasonable expectation of success in doing so. Pet. 32–38; see, e.g., id. at 35 (“[The skilled artisan] would have been motivated to combine the teachings of Rao and Jones to operate in instances where bandwidth is limited and there is contention among applications for bandwidth.”); Ex. 1003 ¶ 138 (Dr. McDaniel testifying that combining the teachings of Rao and Jones “would have required only routine programming knowledge well within the skill of [the skilled artisan].”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 32–38 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Rao and Jones to arrive at the invention of claim 4, and to do so with a reasonable expectation of success. d) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Rao and Jones with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 4 would have been unpatentable as obvious over the combination of Rao and Jones. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 4–21, 31–39; Prelim. Reply 1–5), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 4 would have been unpatentable as obvious over the combination of Rao and Jones.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,639,811 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00945 · APJ Stephen E Belisle · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–24 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Prelim. Resp. 22; Ex. 2001 ¶ 67. Patent Owner argues Petitioner relies on Freund to “cure this deficiency,” but the “Petition fails to explain why [the skilled artisan] seeking to implement a Rao-based system would look to Freund’s teachings of foreground/background classifications designed to limit an employee’s ‘counterproductive Web browsing.’” Prelim. Resp. 22. According to Patent Owner and its expert, Mr. de la Iglesia, the skilled artisan “would not have been motivated to do so, because directly contrary to Rao which suggests prioritizing foreground activity over background activity, the relevant teachings of Freund restrict foreground activity relative to background activity.” Id. (citing Ex. 2001 ¶¶ 67–79); see Ex. 2001 ¶¶ 69 (“Rao favors foreground activity, and Freund favors background activity”), 70 (“In contrast [to Rao], Freund teaches the opposite—that foreground activity should be disfavored relative to background activity.”); Prelim. Resp. 23–25. Patent Owner argues the “Petition does not explain why [the skilled artisan] would have been motivated to combine these two references’ treatment of foreground/background classifications, given their opposing treatment of foreground and background activity.” Id. at 25; see id. at 25–28 (Patent Owner explaining why “none of the Petition’s motivations would have justified combining Rao’s and Freund’s contradictory teachings regarding treatment of foreground activity.” (citing Ex. 2001 ¶¶ 74–79)). In short, according to Patent Owner’s expert’s persuasive testimony, “if [the skilled artisan] were looking for ways to supplement Rao’s treatment of foreground activity, they would not have looked to teachings that explicitly disfavor foreground activities, contrary to Rao’s teachings.” Ex. 2001 ¶ 79 (cited at Prelim. Resp. 28).” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 5–6 (“For purposes of this Preliminary Response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’613 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 61), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 3 (“No terms require construction to resolve this Petition.”); Prelim. Resp. 6 (“Patent Owner agrees that no formal claim construction is necessary.”). We do not find that the express construction of any term is necessary for this decision. 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).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,215,613 - Askeladden, L.L.C. v. Jabaa, L.L.C.InstitutedPTAB · Dec 10, 2024 · IPR2024-00916 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 7–20 on all petitioned grounds, finding a reasonable likelihood that claim 7 would be shown unpatentable over Rescorla and Mathiassen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“b) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the present record, Petitioner shows a reasonable likelihood of prevailing in its challenge to claim 7 as unpatentable over Rescorla and Mathiassen.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that one of ordinary skill in the art would have been motivated to combine Rescorla’s SSL/TLS handshake functions with Mathiassen’s portable device “to enhance security through biometric authentication,” “for increased interoperability,” and for the “security, Ex. 1003 ¶¶ 61–72), 16–17 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶¶ 4, 12, 15, 47, 48; Ex. 1015, xvii), 19 (citing Ex. 1003 ¶ 76), 25–26 (citing Ex. 1003 ¶ 84), 27 (citing Ex. 1003 ¶¶ 91–92). Petitioner also argues that one of ordinary skill in the art would have been motivated to use Mathiassen’s portable device for website authentication as described by Rescorla, for requesting the Certificate and CertificateVerify messages, and for biometrically controlled access to a secure key for authenticating a user to a server. Pet. 29 (citing Ex. 1003 ¶ 98; Ex. 1005 ¶¶ 12, 50, 82), 32–33 (citing Ex. 1003 ¶¶ 63, 108; Ex. 1015, 153), 34 (citing Ex. 1003 ¶ 111; Ex. 1015, 153). In the proposed combination, Mathiassen’s biometric authentication would be implemented after a client receives Rescorla’s Handshake: Certificate Request message and before the client sends a Handshake: Certificate message; the response to the Certificate Request would include biometric authentication of the user; and Rescorla’s Certificate and CertificateVerify messages would be encrypted as described by Mathiassen. Pet. 13–14 (citing Ex. 1003 ¶ 65; Ex. 1015, 98, Fig. 4.2), 33 (citing Ex. 1003 ¶ 110), 35 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 77–83). Petitioner argues that the proposed combination would not require specialized equipment and would not be limited to any specific protocol. Id. at 17 (citing Ex. 1003 ¶ 71; Ex. 1005 ¶¶ 65, 95).” slip op. at 14
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,480,637 - Askeladden, L.L.C. v. Jabaa, L.L.C.InstitutedPTAB · Dec 10, 2024 · IPR2024-00915 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–6 and 21–24 for all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Mathiassen and Ryan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–6 and 21–24 of the ’637 patent on all presented challenges. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and one to two years of work experience in electronic device design, secure electronic communications, or a related field” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 40–41). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner proposes interpreting “resident within” recited by claims 1 and 21 to mean “temporary storage of the software while the software is being executed” with citations to the Specification, declaration, and other prior art. Pet. 8–11. Petitioner also proposes that other terms should be given their plain and ordinary meaning. Id. at 8 (citing Ex. 1003 ¶¶ 42–44). At this stage, the language of the claims and the cited portions of the Specification and declaration support Petitioner’s proposed interpretation of “resident within.” Pet. 8–9; Ex. 1001, 5:12–20, 7:63–65, 8:57–58; Ex. 1003 ¶¶ 45–54. We, therefore, adopt Petitioner’s proposed interpretation of “resident within” to mean “temporary storage of the software while the software is being executed.” Pet. 8. We also determine that express claim interpretation of other terms is not necessary to determine whether Petitioner shows a reasonable likelihood of prevailing. 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that Mathiassen and Ryan are analogous art because they are in the same field of endeavor and reasonably pertinent to a problem of the ’637 patent. Pet. 18–19 (citing Ex. 1003 ¶¶ 72–74). According to Petitioner, one of ordinary skill in the art “would have been motivated to modify Mathiassen’s portable device to conduct and authenticate transactions, as taught by Ryan.” Pet. 18 (citing Ex. 1003 ¶ 72); see also id. at 19–21 (citing Ex. 1003 ¶¶ 74–77; Ex. 1005, code (57), ¶¶ 50, 65–98; Ex. 1006 ¶¶ 105, 223–225, 232, 235, 238, 249, 368). Petitioner also argues that one of ordinary skill in the art “would have been motivated to modify Mathiassen’s portable device to conduct transactions using a wireless interface, as taught by Ryan, to enable Mathiassen’s portable device to communicate wirelessly with external devices.” Id. at 18; see also id. at 21–22 (citing Ex. 1003 ¶¶ 78; Ex. 1005, code (57); Ex. 1006 ¶¶ 151, 223– 225, 235, 248). Petitioner further argues that the proposed combination would have merely been prior art elements combined according to known methods to yield a predictable result. Pet. 22–23 (citing Ex. 1003 ¶ 79). Petitioner additionally argues that the proposed combination would have been modifying a similar device in a same way. Id. at 24 (citing Ex. 1003 ¶ 81; Ex. 1005 ¶ 50, Fig. 2b; Ex. 1006 ¶ 175). In Petitioner’s view, the proposed combination also represents a mere substitution of one known element in the field for another known element. Id. at 24–25 (citing Ex. 1001, 6:50–54; Ex. 1003 ¶ 81; Ex. 1006 ¶¶ 223, 235). Petitioner contends that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,480,637 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. 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 [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Dec 4, 2024 · IPR2024-00943 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 91–152, 158, and 159 on all asserted grounds, finding a reasonable likelihood that claim 91 is obvious over Rao and Fadell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have combined Fadell’s notifications with Rao’s system with a reasonable expectation of success. See Pet. 6–8; Ex. 1015 ¶¶ 317–328, 332. Specifically, a person having ordinary skill in the art would have “combined the functionality of Rao and Fadell (e.g., of Rao’s remote access client and Fadell’s resource utilization component) to apply a policy that applies a prioritization to network packets from a background activity and notifies a user when resource usage approaches a threshold.” Ex. 1015 ¶ 321; see also id. ¶¶ 318–320 (discussing the advantages of Rao and Fadell). In such a system, “when the resource usage threshold is met, network packets from the background activity would be queued and deprioritized . . . , and the user would be notified of the resource usage threshold and afforded options for how to proceed.” Id. ¶ 322. This combination “would have improved . . . Rao’s system by enabling a policy that limits (potentially unwanted or unnecessary) background activity and notifies the user when resource usage limits are reached” and “enable[] a user to selectively control when background activity is deprioritized and held in queues to avoid data usage overages.” Id. ¶ 323. Because such a combination “would have been nothing more than the simple combination of known elements to obtain predictable results,” a person having ordinary skill in the art “would have had a reasonable expectation of success in combining Rao with Fadell.” Ex. 1015 ¶ 327.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. For the purposes of this Decision, we need not expressly construe any claim terms.7 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Dec 4, 2024 · IPR2024-00942 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 2–23, 26, 41–60, 63, 64, 155–157, and 160–171 on all asserted grounds after finding a reasonable likelihood Rao anticipates claim 3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not yet disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. For the purposes of this Decision, we need not expressly construe any claim terms.7 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 13
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,535,318 - Ford Motor Company / American Honda Motor Co., Inc. et al. v. Neo Wireless LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00964 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–14 are unpatentable as obvious under § 103, including claims 1, 3–8, and 10–14 over Walton040 and Li017, and claims 2 and 9 over those references and Tufvesson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art is nearly identical to the one proposed in the Petition—i.e., a minimum of a bachelor’s degree and at least 3 years of experience.” Pet. Reply 28 (citing Pet. 14 (citing Ex. 1003 ¶ 53); Ex. 1047, 4:44:9–11, 78:9–79:3; Ex. 2015 ¶ 22). The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires a lesser “two years of experience” whereas Petitioner’s requires at least three years of experience. However, as Mr. Alberth acknowledges during deposition, “[a] difference of bachelor’s plus two or bachelor’s plus three does not make that much of a big a difference” (Ex. 1047, 78:9–12), both would be able to understand the ’941 patent and cited prior art (id. at 78:13–18), perform the same analysis, and come to the same conclusions regarding the prior art (id. at 78:19–79:3). Thus, we determine that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Pet. Reply 2 (citing Ex. 1003 ¶¶ 367–374). In fact, Patent Owner states that there is no “dispute that Walton040’s own methodology already accounts for time varying factors including user mobility, frequency-selective fading and intercell interference.” PO Sur-reply 10 (citing PO Resp. 46–49; Ex. 2027, 133:11–135:6). In view of Li017’s solution for the intercell interference problem, and the similarity of the technical environments of the two references, there is ample evidence that Li017’s technique would operate predictably well in Walton040. For example, Li017 describes that “each subscriber continuously monitors the reception of the pilot symbols and measures the SINR and/or other parameters,” in order “to select one or more clusters with good performance.” Ex. 1009 ¶ 44. Thereafter, each subscriber may “report[] these SINR measurements to their base station through an access channel.” Id. ¶ 45. The SINR for a given subcarrier cluster “may comprise the average of the SINR values of each of the subcarriers in the cluster,” “may be the worst SINR among the SINR values of the subcarriers in the cluster,” or may be “a weighted averaging of the SINR values of the subcarriers in the cluster.” Id. ¶ 45. “Upon receiving the feedback from a subscriber, the base station further selects one or more clusters for the subscriber among the candidates.” Id. ¶¶ 45, 47. Similarly, Walton040 describes that “the terminals may derive the SNR for each transmission channel and report downlink CSI to the base station via a reverse channel,” and that “[t]he base station would then use this information . . . to determine the channel . . . assignments.” Ex. 1008 ¶ 93. Petitioner’s proposed modification simply allocates subcarriers as a group, as opposed to individually, where both Walton040 and Li017 use similar methods to determine which subcarriers are best for a given terminal/subscriber. In particular, Petitioner argues that “modifying Walton040’s BS to incorporate Li017’s cluster selection process and informing the subscriber of the selected subchannel configuration would have required minimal modifications (e.g., providing logic in Walton040’s BS to select the configuration based on existing CSI and inform the terminal).” Pet. 82 (citing Ex. 1003 ¶¶ 370–371).” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“configuration.” Rather, Patent Owner asserts that the plain meaning requires something more than an indication of a subchannel. See PO Resp. 53–54, 60. This comports with the general preference for “[a] claim construction that gives meaning to all the terms of the claim.” Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). We thus look to Petitioner’s combination for the indication of something more than solely an indication of the identity of a subchannel, namely, information encompassed by the term “configuration.”12 As noted above, Petitioner points to Li017’s notification of a cluster allocation through a control channel. Pet. 95 (citing Ex. 1009 ¶ 48; Ex. 1003 ¶ 421). Petitioner emphasizes that an allocated cluster can be either a coherence or diversity cluster, and that “[t]hese different subcarrier configurations correspond to different subchannel configurations.” Pet. Reply 13–14 (citing Ex. 1009 ¶ 111, Figs. 9, 12). Patent Owner argues that Li017 discloses informing a user of an assigned base station subchannel, but not a “subchannel configuration.” PO Resp. 61. In other words, “the parameter transmitted to the user is only a cluster/subchannel selection.” Id. at 63. We disagree with Patent Owner that Li017’s notification is solely an indication of a subchannel. See PO Resp. 62. As shown in Li017, the 12 To the extent Patent Owner continues to pursue the line of argument presented in the Preliminary Response that the claimed subchannel configuration must be specific to a single mobile station, and must be adaptable (see id. at 56–60; Prelim. Resp. 36–47), we do not need to address Patent Owner’s proposed interpretation for the reasons discussed above (see supra § II.C). allocation of a coherence cluster indicates a close grouping of subcarriers, whereas use of a diversity cluster indicates a disparate grouping of subcarriers—i.e., “coherence” and “diversity” are indicators of a particular configuration of an allocated subchannel. See Ex. 1009 ¶ 111. Limitation 1G, addressed below, defines a subchannel configuration as being “characterized by localized subcarriers or distributed subcarriers,” and Patent Owner does not dispute that localized subcarriers and distributed subcarriers correspond to coherence clusters or diversity clusters. See, e.g., PO Resp. 36 (“Li017’s ‘clusters’ are a collection of OFDM subcarriers, and are akin to the ’941 Patent’s subchannels.”). It thus follows that the term “subchannel configuration” includes an indication that the subchannel is comprised of either coherence or diversity clusters comprised of subcarriers, such as Li017’s notification to a subscriber of its allocated cluster. See Ex. 1009 ¶¶ 48, 111. Thus, we find that Petitioner has proven, by a preponderance of the” slip op. at 34
- BurdenNot reached
“802.16a-2001 and 802.16a-2003, with or without further combination with Heath. Pet. 29–75. Because Petitioner has shown that claims 1–14 are unpatentable based on the asserted grounds analyzed above, we do not reach these additional asserted grounds. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission . . . is at perfect liberty to 14 We addressed claims 2 and 9 in a limitation-by-limitation analysis in our Institution Decision. See Inst. Dec. 62–63. reach a ‘no violation’ determination on a single dispositive issue.”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (recognizing that “[t]he Board has the discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 38
Patent outcomesUS 10,075,941 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,075,941
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.