- Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentablePTAB · Feb 6, 2026 · IPR2024-01340 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–12 and 14–18 are unpatentable as obvious over Whitehead, alone or with Marcus ’904; claims 13 and 19–24 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“establishes that the subject matter of independent claim 19 would have been obvious in view of Whitehead. Claim 19 recites “an aggregator having a memory and a processor, the processor adapted for . . . providing an output signal including data indicative of the selection and of user data.” Ex. 1001, 15:51–16:3. As discussed above (Section II.C.2), we construe claim 19 as requiring a signal including both “data indicative of the selection and of user data.” Accordingly, we consider whether Petitioner has shown that Whitehead teaches or suggests that the “aggregator” “provid[e] an output signal including” both “data indicative of the selection and of user data.”” slip op. at 46
- Expert testimonyOther
“Cristofalo’s “user identifiers” represent data about users that Cristofalo’s system uses to “select a specific media object” (advertisements) from received “multi-object programming data.” Cristofalo at ¶ [0048]. For example, a user identifier may indicate that a given user is a Coca-Cola drinker, and when the receiving system receives the multi-object programming data it can select a particular media object out of several possible media objects (e.g., a Pepsi advertisement) to push to the user. Id. This user data exists independently of, and does not relate to, any particular media stream or streams. See Goodrich PO Resp. Decl. at ¶ 135. Petitioner seems to recognize this when tersely referring to “user identifiers” as “data,” not “data relating to a plurality of streams.” Pet. at 71. Accordingly, Cristofalo’s “user identifiers” are not the claimed “data related to the plurality of media streams.” Goodrich PO Resp. Decl. at ¶ 136.” slip op. at 73
Patent outcomesUS 8,145,704 mixed§ 103 obviousnesscites GrahamPatents in suitUS 8,145,704 - Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 8,886,753 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,753 - DISH Network LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Nov 14, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Remand
Claims 1, 4–8, and 10–16 are unpatentable under § 103; claims 2, 3, 9, and 17 were not shown unpatentable on any asserted ground.
RulingsRemand decision- RemandOther
“The Director then issued an Order, Paper 47 (“Director’s Order” or “Dir. Ord.”) granting Director Review, vacating-in-part the Final Written Decision, and remanding the case to this Board panel for proceedings consistent with the Order. The Director vacated-in-part the Final Written Decision because it did not sufficiently address Patent Owner’s arguments with respect to claim 17 (and similar claims 2 and 9). We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand from Director Review is entered pursuant to 35 U.S.C. § 318(a). Having reviewed the complete trial record, we determine that Petitioner has shown, by a preponderance of the evidence, that the challenged claims are unpatentable except for claims 2, 3, 9, and 17.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“2. Analogous Art – DSL-Book A reference is analogous art to the claimed invention if: (1) the” slip op. at 75
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“4. Motivation to Combine Amit and Jacobsen Petitioner contends that a POSITA would have modified “Amit’s” slip op. at 31
Patent outcomesUS 7,594,249 mixed§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Sep 5, 2025 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1, 3, and 4 are unpatentable as obvious over Afshary and Mirfakhraei; claim 2 was not shown unpatentable over either asserted combination.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” is too narrow. Although Patent Owner points to various parts of the ’518 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses twisted pair wiring and satellite communications as media that can be used. See, e.g., Ex. 1001, 1:27–29, 3:33–35, 3:49–50, 3:67–4:3, 5:61–6:3, 8:20–23, 9:28–33. Accordingly, we adopt the following level of ordinary skill in the art for use in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to four years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find that this skill level is consistent with the problems and solutions identified in the ’518 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 15
- Expert testimonyDecided for petitioner
“We determine that Mr. Bertonis and Mr. Garrett had at least the skill level of a POSITA at the time they submitted their declarations and testimony in this case. Ex. 1002 ¶¶ 4–15, Appx. A; Ex. 2001 ¶¶ 8–12, Appx. A; cf Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335 1341 (Fed. Cir. 2024) (“An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art.”). Accordingly, we see no reason to disregard the testimony of either on the basis that they do not have a POSITA’s skill level.” slip op. at 45
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Because an assessment of whether the prior art discloses a means- plus-function limitation depends not only on the presence of the recited function but also the structure that performs that function as described in the patent’s specification, we address Petitioner’s undisputed contentions for the means-plus-function limitations below.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We conclude that Petitioner has shown by preponderant evidence that Mirfakhraei is in the same field of endeavor as the ’518 patent, i.e., “broadband communication networks.” Mirfakhraei is thus analogous art because it is in the same field of endeavor as the ’518 patent.” slip op. at 27
Patent outcomesUS 7,295,518 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,295,518 - Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Aug 15, 2025 · IPR2024-00442 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–4, 9–13, and 18 are unpatentable as obvious; claims 5–8 and 14–17 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “accepts” Petitioner’s proposed level of skill in the art “solely for purposes of responding to the Petition.” PO Resp. 11. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’826 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In addition, Petitioner contends that the ’826 patent’s claims are not recited in means-plus-function form under § 112 ¶ 6. Pet. 25. Because the word “means” does not appear in the claims of the ’826 patent, there is a presumption that the claims do not recite means-plus-function limitations under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Since neither party offers any argument or evidence to contravene this presumption, we do not construe any claim term as means-plus-function in rendering our decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Although Patent Owner argues that adding Konstaninos’s multi- channel functionality to Kamieniecki’s single-channel device would increase costs and complexity, Patent Owner overlooks that multi-channel functionality would also increase the STB’s capabilities. In any case, “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate a motivation to combine.” General Elec. Co. v. Raytheon Tech. Corp., 983 F.3d 1334, 1351 (Fed. Cir. 2020) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Furthermore, Petitioner presents preponderant evidence that the market demand was such that customers would have desired an STB with multi-channel functionality even though it would cost more than a basic STB. Pet. Reply 6–8 (citing Ex. 1010 ¶¶ 1, 11, 16, 102–104; Ex. 1032 ¶¶ 5–6; Ex. 1033, 27:6–29:23; Ex. 2013 ¶¶ 70, 108). Konstantinos expressly teaches that the “evolving market for data and programming services will demand that receivers have the capability of multi-channel tuning.” Ex. 1010 ¶ 1. Petitioner has thus established that there was market demand that would have led a POSITA to improve Kamieniecki with Konstantinos’s multi-carrier capability. See KSR, 550 U.S. at 418 (“Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge of a [POSITA], all in order to determine whether there was an apparent reason to combine the known elements in the manner claimed by the patent at issue.” (emphasis added)). Moreover, we agree with Petitioner that Konstantinos addresses the cost and complexity issues that Patent Owner asserts are problematic. Pet. 35–36; Pet. Reply 8–9 (citing Ex. 1010 ¶¶ 102, 105–106). For example, Konstantinos teaches that breaking up the original signal into smaller subsignals decreases the required sampling rate for each band since interleaved lower-rate samplers can be used, which reduces power consumption and interference, and enables conventional digital channel selection methods to be used for fine selection of one channel from a band of channels. Ex. 1010 ¶¶ 102, 104105. In addition, Konstantinos teaches reducing cost and complexity through a single chip solution. Ex. 1002 ¶ 150; Ex. 1010 ¶ 44. Hence, we do not see the cost or complexity issues that Patent Owner mentions as barriers that would have prevented a POSITA from making the combination. Similarly unavailing is Patent Owner’s stance that Kamieniecki is satisfactory for the applications for which it is designed such that a POSITA would not seek to improve it with Konstantinos. PO Sur-Reply 8–11. Konstantinos recognizes the market demand for multi-channel functionality, so adding this capability to Kamieniecki’s single-channel device would have been a natural thing for the POSITA to pursue in light of the advantages afforded thereby. Ex. 1010 ¶ 1; KSR, 550 U.S. at 420 (“any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”).” slip op. at 17
Patent outcomesUS 9,825,826 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,825,826 - PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision
Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26
Patent outcomesUS 9,427,662 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–13 and 17–20 are unpatentable over the stated obviousness grounds; claims 14–16 are not shown unpatentable because the cited art does not teach logic configured to determine concurrent failure probability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We decline to adopt Patent Owner’s implicit construction that would require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. 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))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38
Patent outcomesUS 8,830,821 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,830,821 - Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00402 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–13 and 17–20 are unpatentable over the Doshi and Guichard grounds; claims 14–16 were not shown unpatentable over Doshi, Guichard, and Xu.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. 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))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38
Patent outcomesUS 8,830,821 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,830,821 - Cisco Systems, Inc. v. Orckit CorporationSome claims unpatentablePTAB · Oct 8, 2024 · IPR2023-00714 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–5, 7–16, 18–22, and 24–26 are unpatentable as obvious over Vink and Patrick, with or without AAPA; claims 6, 17, and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSA” or “POSITA”) would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 59–60). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 19. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues “that ‘subscriber lines’ should be construed as ‘communication lines to users of subscription-based network services.’” Id. Petitioner does not dispute this construction directly, but rather argues that no construction is necessary. Reply 6. We determine that no terms need to be construed. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here however, we have found that it was known to connect LANs to external networks. See Ex. 1014, 6:23–28, Fig. 1; Ex. 1015, 1:6–9; Ex. 1016, 1:22–25; Ex. 1017, 1:7–11. We further agree with Petitioner’s uncontested point that “[t]echniques to further allow the communication system to access external networks by connecting the master to an external network were well-known in the art, as evidenced by Patrick and/or AAPA.” Pet. 24 (citing Ex. 1003 ¶¶ 74–88). The Petition focusses on combining the “communication systems” of Vink, Patrick and/or AAPA, as opposed to relying on a particular type of LAN. Thus, in contrast to Forest Lab’ys, we determine that the general or “generic” benefit of providing “access to a wider array of information,” where it was already known to provide external network access (e.g., the internet) to LANs,5 does provide a motivation to combine Vink and Patrick, with or without AAPA. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” (quoting KSR, 550 U.S. at 417)).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner also argues that Vink “teaches against” hierarchical addressing because “doing so would eliminate the purported advantages associated with using a non-hierarchical system.” PO Resp. 36 (citing Ex. 2005 ¶ 69 (Patent Owner’s declarant making the same statement)). Patent Owner does not further discuss the reasoning behind this statement, identify the “purported advantages,” or even identify the relevant disclosure relied on in Vink. We decline to speculate as to Patent Owner’s position in this regard. We further note that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 19
Patent outcomesUS 6,680,904 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,680,904 - Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431
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.