- PTAB · Feb 20, 2025 · IPR2024-01287 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on challenged claims 1–3 and 5–11 based on the asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’982 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“(1) whether the court granted a stay or evidence exists that one may be granted if the Board institutes a trial; (2) the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; (3) the investment in the parallel litigation by the court and the parties; (4) the overlap in the issues raised by the petition and the issues in the parallel litigation; (5) whether the petitioner and the defendant in the parallel litigation are the same party; and (6) other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, IPR2020-00019, Paper 11 at 5–6. These factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. Further, Fintiv instructs that the Board should take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see PTAB Consolidated Trial Practice Guide at 55–56, 58 (Nov. 2019) (“CTPG”).10” slip op. at 50
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingPreamble not limitingMixed
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotations omitted) (quoting Pitney Bowes v. Hewlett- Packard Company, 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (citations omitted). “[T]he rule against giving invention-defining effect to intended-use preamble language reflects . . . the ‘well settled’ fundamental principle ‘that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”’ Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). On the current record, we determine that the recitation of “a DOCSIS Provisioning Of EPON (DPOE) system” in the preamble of claim 1 is limiting because it provides the antecedent basis for the term “the DPOE system” in body of claim 1 (e.g., limitation 1a). We, however, have not received specific arguments from the parties as to why the entire preamble of claim 1 would be limiting based on the antecedent basis provided by “a DOCSIS Provisioning Of EPON (DPOE) system.” Further, as discussed above, Patent Owner does not provide any explanation of or support for its assertion that the preambles of claims 1 and 6 serve to define the invention that is claimed and are not simply a description of the prior art. Prelim. Resp. 22. Because we do not need to resolve the issue of whether the entire preamble of claim 1 is limiting to decide whether to institute inter partes review, we will wait for further briefing from the parties before deciding whether the entire preamble of claim 1 is limiting. For claim 6, we determine that the recitation of “a DOCSIS Provisioning Of EPON (DPOE) system” in the preamble is not limiting because it does not provide the antecedent basis for any term in the body of claim 6. As mentioned, limitation 6a recites “a DPoE system,” rather than the DPOE system. Further, as discussed above, Patent Owner does not provide any explanation of or support for its assertion that the preambles of claims 1 and 6 serve to define the invention that is claimed and are not simply a description of the prior art. We do not independently see such support in the record. Thus, for this Decision, we determine that the preamble of claim 6 is not limiting. Patent Owner argues that the preamble of claim 4 is limiting. Prelim. Resp. 23 (“the preamble is limiting in all the independent claims.”). For this Decision, as set forth in Sections III.A.6.a and III.C.3 below, we do not need to determine whether the preamble of claim 4 is limiting in light of Petitioner’s showings. slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. Patent Owner “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill (Pet.[] 11), Petitioner has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’982 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
Claim constructionDiscretionary denialPatents in suitUS 9,287,982
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.