• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Nov 12, 2019 · IPR2018-01018 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Reudink and Antonio; the motion to amend with substitute claim 18 is denied for lack of written-description support and obviousness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends: [A] POSITA[5] would have had Bachelor of Science in Electrical Engineering, or an equivalent field, as well as three to four years of experience in the field of wireless communications; or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in the field of wireless communications. Pet. 30 (citing Ex. 1006 (Negus Decl.) ¶ 29). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art, although someone with less education but more experience, or more education but less experience could also have met this standard.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). At oral argument in IPR2018-01017, the attorney for the Patent Owner confirmed that there was no dispute with regard to the level of skill in the art. Ex. 3002, 34:22–24. We determine that the aforementioned argument is applicable to this proceeding because the ’728 patent is related to the patent challenged in IPR2018-01017 (see supra § I.A). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “proposed amendment “an access point compliant with IEEE 802.11 standards.” In the Motion to Amend, Patent Owner cites column 4, lines 38 through 44, of the ’728 patent in support of this amendment. See Mot. to Amd. 7.11 The cited passage in the ’728 patent states: “the examples presented herein are directed towards wireless IEE[E] 802.11 type network configurations, wherein the client device is capable of roaming within the coverage area of the smart antenna and the client device is configured to establish an association with an access point over a main beam.” Ex. 1001, 4:38–44 (emphasis added). This passage relates to the capability and configuration of the client device not the access point. See Ex. 2006 (Short Decl.) ¶ 40 (citing this same passage in support of the statement that “a [POSITA] would understand that the receiving device can be 802.11 compatible.”) (emphases added). 11 In this section of the Motion to Amend, Patent Owner does not even clearly assert that the Specification of the ’728 patent provides written description support for this amendment. See Mot. to Amd. 7 (“[T]he access point may be compliant with 802.11 standards.”) (emphasis added). The declaration of Patent Owner’s technical witness, Dr. Short, filed in support of the motion to amend provides nothing more than a verbatim recitation of this sentence and a citation to same passage in the ’728 patent with no reasoning or explanation. See Ex. 2006 ¶ 36. As the cited passage does not support his statement, we give no weight to this portion of Dr. Short’s declaration. See 37 C.F.R. § 42.65(a). And, we find that Patent Owner’s ambiguous assertion lacks evidentiary support.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. Pet. 24–27 (citing Ex. 1006 (Negus Decl.) ¶ 451). The Petition states: A POSITA at the time of Reudink and Antonio would have been motivated to combine the teachings of Reudink and Antonio. Reudink sends a direction message to remote stations indicating if a beam is acceptable for communication and, if not, that the remote station should search for another beam. Acquiring a beam can thus take some time and may be a problem in cases where beam acquisition is time critical, such as for a mobile remote station. Modifying the direction message of Reudink to include the “add beam set” and “drop beam set” from Antonio’s HDM would speed up beam handoffs for mobile users in the Reudink wireless system and also reduce signaling load on the network. Ex. 1006 ¶ 451. Making this combination is within the ordinary creativity and routine skill of a POSITA because Reudink and Antonio are both directed to problems associated with determining and communicating the preferred beams to be used to establish communications between a remote station and a base station in a wireless multi-beam communication system. Ex. 1006 ¶ 439. Both Reudink and Antonio consider multi-beam communication systems applicable to wireless communications, with both fixed and mobile remote stations. Ex. 1006 ¶ 440. Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio. Conclusion regarding Unpatentability of Claim 16 After consideration of the arguments and evidence presented by the parties, we find that a preponderance of the evidence establishes Reudink and Antonio teach all the limitations of claim 16 and that Petitioner has established there was a motivation to combine the relevant teachings of Reudink and Antonio. We conclude that claim 16 would have been obvious in light of Reudink and Antonio.” slip op. at 33

  Patent outcomesUS 7,729,728 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Microsoft Corporation v. Ipa Technologies Inc.Institution denied
  PTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13

  Discretionary denial
  Patents in suitUS 7,036,128
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.

  RulingsInstitution decision

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

    “information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,036,128
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.

  RulingsInstitution decision

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

    “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8

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

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

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

    “Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,036,128
• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications, LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 10, 2019 · IPR2018-01017 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38 are unpatentable as obvious over Reudink and Antonio; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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). Petitioner contends, relying on the testimony of Dr. Negus, that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, or an equivalent field, and two years of experience in the field of wireless communications or a Bachelor of Science in Electrical Engineering, or an equivalent field, and three to four years of experience in the field of wireless communications. Pet. 27–28 (citing Ex. 1006 ¶ 29). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. See generally PO Resp. We adopt Dr. Negus’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 9

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

    “Accordingly, we agree with Petitioner that the aforementioned limitation should be given its plain and ordinary meaning and no further express construction is needed, except we conclude that the language of the claims does not require identifying the current beam, as Patent Owner proposes.8” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “are persuaded that Reudink teaches “configuring said first device to determine if said associated second device should operatively associate with a different beam downlink transmittable using said smart antenna” as recited in limitation 1c. Ex. 1001, 10:63–11:2 (emphasis added). We credit and give significant weight to the testimony of Dr. Negus (Ex. 1006) over Dr. Short (Ex. 2002; Ex. 2004),11 because Dr. Negus’s testimony is consistent with the portions of Reudink he quotes expressly in his testimony reproduced above, as well as with other of Reudink’s disclosure. As background, as set forth in the summary of Petitioner’s contentions and Dr. Negus’s testimony above with respect to limitations 1a and 1b, Reudink 10 The acronyms “POSA” and “POSITA” appearing in this Decision refer to a person having ordinary skill in the art. 11 Patent Owner asserts it relies on two Declarations of Dr. Short for the challenged claims, i.e., Exhibit 2002 and Exhibit 2004. Tr. 39:22–25. Patent Owner refers to Exhibit 2002 as “Short Decl.” and Exhibit 2004 as “Ex. 2004” in its Patent Owner Response. PO Resp. 2, 14. As explained below, in its Motion to Amend, Patent Owner refers to “Ex. 2003” as “Short Decl.,” but this is a typographical error and Patent Owner in its Motion to Amend appears to rely on Exhibit 2004 and refers to it using the same name used for Exhibit 2002 in its Patent Owner Response. See supra § II.E.2. We have considered Patent Owner’s evidence presented in Exhibits 2002 and 2004 to the fullest extent possible in view of Patent Owner’s arguments and explanations. Patent Owner, however, is required to explain clearly the relevance of all the evidence Patent Owner relies on in its Patent Owner Response. See 37 C.F.R. §§ 42.22; 42.23 (2019); see also Paper 13, 5 (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”) synch bursts and attempts to measure the signal strength.” Ex. 1009, 12:14– 15. Reudink continues by describing “[t]he RS preferably logs the carrier numbers and the beam numbers that produce a strongest receive signal strength, for example a first and second most preferred carrier and beam combination may be determined.” Id. at 12:24–32; see also id. at 15:42–43 (“[E]ach or ones of the RSs may include signal quality measurement apparatus.”) Reudink’s remote station reports this information in a reverse MBAACH message including a user identifier annotated in blue and a message report annotated in green. Id. at 12:29–41, Fig. 13. Reudink teaches “[t]he received direction message of a preferred embodiment may instruct the RS that the identified best carrier, angle and beam is acceptable for communication or, if unavailable, perhaps to look for another BS or RF carrier.” Id. at 12:55–59. Next, Reudink teaches subsequent identification of a preferred antenna beam based on changing conditions including interference, optimizing network capacity and quality, and movement of remote stations. Ex. 1009, at code (57) (“A preferred embodiment control channel is taught which provides for the initial and subsequent identification and use of a most preferred antenna beam for establishing communications” (emphasis added)), 2:64–3:9 (“the multiple beam antennas of the BSs of the present invention may provide antenna beams which substantially overlap, such as to allow redundancy and/or to provide the ability for RSs to change to different channels, such as based on interference conditions” (emphasis added)), 3:46–59 (describing that Reudink’s system determines which remote stations may operate simultaneously with tolerable co-channel interference and provides desired quality/priority of service). Reudink respect to limitations 1a and 1b for subsequent identification of preferred antenna beams. Id. at 16:2–5, Fig. 5A (describing “an algorithm operable to cause RSs to periodically identify and provide BS antenna beam selection information to the network”), 16:23–26 (describing with respect to the aforementioned algorithm that “[a] preferred embodiment technique providing identification of a BS antenna beam and/or RS antenna beam according to the present invention is described in detail above with respect to the MBAACH” (emphasis added)), 16:62–65, Fig. 5B (describing “an algorithm operable to cause BSs to periodically measure signal attributes associated with RSs in communication therewith (or for which communication therewith is possible)”). Additionally, Reudink teaches tracking and determining a preferred beam for remote stations that change position. For instance, Reudink teaches that its determinations of a preferred antenna beam are made in “time critical” situations, “such as where ones of the RSs are likely to change position and/or where propagation conditions are subject to material change.” Ex. 1009, 11:36–39; see also id. at 11:2–3 (describing “initial assignment and subsequent tracking of the best serving base station and the most preferred antenna beam associated therewith”) (emphasis added). Consistent with Petitioner’s contentions and Dr. Negus’s testimony, therefore, a person of ordinary skill in the art would understand that Reudink’s determination is whether said associated second device should operatively associate with a different beam downlink transmittable. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (“What a prior art reference discloses or teaches is determined from the perspective of one of ordinary skill in the art.”); In re Hedges, 783” slip op. at 28

  Patent outcomesUS 7,062,296 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,062,296
• Cisco Systems, Inc. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 3, 2019 · IPR2018-00763 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Alastalo and Antonio, and over Alastalo, Antonio, and the WTEC Report; the motion to amend proposing claim 18 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[A] Person of Ordinary Skill In The Art (“POSITA”) is someone knowledgeable concerning wireless communication systems employing beamforming technologies. That person would have (i) a master’s degree in electrical engineering, and (ii) two years of smart antenna design experience. Lack of work experience can be remedied by additional education, and vice versa. Pet. 17 (citing Ex. 1003 (Winters Decl.) ¶ 18). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert that one of ordinary skill would be a person having a master’s degree in electrical engineering and two years of smart antenna design experience, wherein lack of work experience can be remedied by additional education and vice versa.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). The attorneys for the parties agreed at the oral argument that there was no dispute regarding the level of ordinary skill in the art. Tr. 7:14–16 (Petitioner’s attorney); 14:25–15:1 (Patent Owner’s attorney). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by the parties.” slip op. at 10

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

    “proceeding and the prior art assertions presented herein, the only term that might require construction is ‘phased array antenna.’” Pet. 17 (emphasis added). The Patent Owner’s Response states: “[t]he term ‘phased array antenna’ does not require construction in order to resolve the parties’ dispute.” Resp. 7. In the Response, Patent Owner further asserts that no claim construction is necessary. Id. And, in relation to its Motion to Amend, Patent Owner proposes no claim construction and asserts no claim 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §103. Because the ’728 patent has an effective filing date before the effective date of the applicable AIA amendment, we refer to the pre-AIA version of 35 U.S.C. §103. claim construction in its Opposition to the Motion to Amend. See generally MTA Opp. At oral argument, the attorneys for the parties agreed that there was no dispute regarding claim construction. Tr. 11:12–14 (Petitioner’s attorney); 15:1–2 (Patent Owner’s attorney). We determine that no terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms that are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Response to motivation to combine. See generally PO Resp. Patent Owner argues that the deposition testimony of Petitioner’s technical witness, Dr. Winters, establishes that “Dr. Winters did not offer opinions sufficient to show a motivation to combine. To the contrary, Dr. Winters testified . . . he merely concluded that the ordinary artisan would have ‘considered the technologies that were available,’ and as part of the process ‘would look at the possibility of combining Antonio and Alastalo.’” PO Resp. 1 (citing Ex. 2003 (Winters Deposition Transcript) 41:17–23). We find that the deposition testimony of Dr. Winters confirms rather than contradicts Dr. Winters’s declaration. In his declaration, Dr. Winters stated, “[a] POSITA would have been motivated to combine the teachings of Alastalo and Antonio to produce the obvious, beneficial, and predictable result of providing alternative communication beams and reducing call dropping rates in Alastalo’s wireless communication system.” Ex. 1003 ¶ 43. These conclusions are well-supported with explanations and reasoning that are based on the teachings of Alastalo and Antonio. Id. ¶¶ 44–51. The testimony that Patent Owner cites is: look at the possibility of combining Antonio and Alastalo. A. Yes. A person -- a POSITA would at that time have considered the technologies that were available. Ex. 2003, 41:17–23. We do not discern how agreeing “that a person of skill in the art would look at the possibility of combining Antonio and Alastalo” and stating that “a POSITA would at the time have considered the technologies that were available” contradicts Dr. Winters’s testimony that a motivation to combine the teachings of Alastalo and Antonio existed. To the contrary, this testimony confirms and supports Dr. Winters’s statements in his declaration relating to motivation to combine the relevant teachings of these references. We have reviewed Dr. Winter’s declaration and his deposition transcript and find that are consistent and fully support Petitioner’s arguments relating to motivation to combine the relevant teachings of Alastalo and Antonio.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Pet. 43. We agree with Petitioner that one of ordinary skill would have been motivated to combine the teachings of Alastalo and Antonio in order to provide alternative communication beams and to reduce call dropping rates. We find the Petition contains a reasonable and well-supported rationale and explanation showing the existence of a motivation to combine the relevant teachings of Alastalo and Antonio. As noted previously, Patent Owner directs all its arguments in the Response to motivation to combine. See generally PO Resp. Patent Owner argues that the deposition testimony of Petitioner’s technical witness, Dr. Winters, establishes that “Dr. Winters did not offer opinions sufficient to show a motivation to combine. To the contrary, Dr. Winters testified . . . he merely concluded that the ordinary artisan would have ‘considered the technologies that were available,’ and as part of the process ‘would look at the possibility of combining Antonio and Alastalo.’” PO Resp. 1 (citing Ex. 2003 (Winters Deposition Transcript) 41:17–23). We find that the deposition testimony of Dr. Winters confirms rather than contradicts Dr. Winters’s declaration. In his declaration, Dr. Winters stated, “[a] POSITA would have been motivated to combine the teachings of Alastalo and Antonio to produce the obvious, beneficial, and predictable result of providing alternative communication beams and reducing call dropping rates in Alastalo’s wireless communication system.” Ex. 1003 ¶ 43. These conclusions are well-supported with explanations and reasoning that are based on the teachings of Alastalo and Antonio. Id. ¶¶ 44–51. The testimony that Patent Owner cites is: look at the possibility of combining Antonio and Alastalo. A. Yes. A person -- a POSITA would at that time have considered the technologies that were available. Ex. 2003, 41:17–23. We do not discern how agreeing “that a person of skill in the art would look at the possibility of combining Antonio and Alastalo” and stating that “a POSITA would at the time have considered the technologies that were available” contradicts Dr. Winters’s testimony that a motivation to combine the teachings of Alastalo and Antonio existed. To the contrary, this testimony confirms and supports Dr. Winters’s statements in his declaration relating to motivation to combine the relevant teachings of these references. We have reviewed Dr. Winter’s declaration and his deposition transcript and find that are consistent and fully support Petitioner’s arguments relating to motivation to combine the relevant teachings of Alastalo and Antonio.” slip op. at 25

  Patent outcomesUS 7,729,728 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Aruba Networks, Inc. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 1, 2019 · IPR2018-00726 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Hovers and Jetzek because the combined teachings establish every limitation, motivation to combine, and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art of the ’728 patent at the time of the alleged invention (“POSA”) would have had either a Bachelor’s degree in electrical engineering with at least three to four years of experience in the field of wireless communications, or a Master’s degree in electrical engineering with at least two years of experience in the field of wireless communications technology or other communication-related technology. Pet. 11 (citing Ex. 1009 (Acampora Decl.) ¶ 71). Patent Owner does not address this issue. See generally PO Resp. We find Petitioner’s contention to be reasonable and consistent with the prior art of record. We adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 9

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

    “II. ANALYSIS A. Claim Construction Neither party raises any issues relating to claim construction. Pet. 6–7; see generally PO Resp. We determine that no terms require construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (providing that only those terms that are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner

    “And, even if Patent Owner’s argument is correct, “obviousness must be determined in light of all the facts, and . . . 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) (emphasis added); see also PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.”). We find, on the complete record, that Petitioner’s reasoning demonstrates, by a preponderance of the evidence, that a person having ordinary skill in the art would have been motivated to modify Hover’s with Jetzek’s teachings as proposed by Petitioner. Petitioner establishes, and Patent Owner does not contest, that Hovers and Jetzek teach all the limitations of claim 16. Petitioner provides well-supported and numerous reasons for combining the relevant teachings of Hover and Jetzek that Patent Owner fails to squarely address. We also are persuaded that Petitioner shows a person having ordinary skill in the art would have had a reasonable expectation of success and Patent Owner’s arguments and evidence do not undermine Petitioner’s showing. Weighing all the evidence and arguments presented by the parties, we conclude that a preponderance of the evidence establishes that claim 16 is unpatentable based on Hovers and Jetzek.” slip op. at 39

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner moves to exclude “Exhibit 2012, and portions of the record that reference this exhibit, including portions of Patent Owner’s Sur-Reply (Paper No. 30 at 16–17).” Motion to Exclude 1.8 However, this evidence is offered by Patent Owner in support of an argument that the Board has rejected because it is not based on a recited claim limitation. The Board has not relied on Exhibit 2012 or any portion of the record relating to Exhibit 2012 in reaching this decision. Update to Office Trial Practice Guide, 83 Fed. Reg. 39989 (Aug. 13, 2018) (available at https://go.usa.gov/xU7GP) at 17 (“In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and 8 Within five business days of service of Exhibit 2012 and Patent Owner’s Sur-Reply, Petitioner filed a timely objection as required pursuant to 37 C.F.R. § 42.64(b)(1). See Paper 31. the motion to exclude is moot.”). As such, we do not believe it is necessary or appropriate for us to exclude Exhibit 2012 or the related arguments. Therefore, we deny the Motion to Exclude.” slip op. at 40

  Patent outcomesUS 7,729,728 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Aruba Networks, Inc. v. XR Communications, LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Sep 4, 2019 · IPR2018-00725 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38 are unpatentable as obvious over Hovers and Jetzek.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art at the time of the alleged invention of the ’296 patent would have had either a Bachelor’s degree in electrical engineering with at least three to four years of experience in the field of wireless communications, or a Master’s degree in electrical engineering with at least two years of experience in the field of wireless communications. Ex. 1012 ¶ 72. Patent Owner does not dispute Petitioner’s proffered level of ordinary skill or propose an alternative. See generally PO Resp.; Tr. 6:4–5, 8:3–5. On the record before us, we are persuaded to adopt Dr. Acampora’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 9

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

    “C. Claim Construction In this inter partes review, we construe claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2017).6 Neither party provides an express construction for any claim term. Pet. 6–7; see generally PO Resp; Tr. 6:4–5, 8:3–5. We determine that no claim terms need to be construed expressly to resolve the parties’ controversies. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “both parties, we are persuaded by Petitioner’s explanation that the Petition articulates reasoning for modifying Hovers in the manner proposed by Petitioner. In addition, we credit Dr. Acampora’s testimony over that of Dr. Short because Dr. Acampora’s testimony is consistent with the evidence of record. For instance, we credit Dr. Acampora’s testimony that a person having ordinary skill in the art would have had reason to use Jetzek’s handoff algorithm, for example, to conserve bandwidth and promote “efficient use of system resources.” Ex. 1012 ¶¶ 80, 83, 89 (citing, e.g., Ex. 1004, 3:20–4:2, 19:8–13, 20:1–4). Consistent with Dr. Acampora’s testimony (id.), Jetzek teaches that “[a]n advantage of hard handoff, therefore, is a reduced need for system resources.” Ex. 1004, 3:20–4:2; see also id. at 2:1–3 (describing that in a hard handoff, “there is no overlap in time between transmissions received from an original, serving base station and transmissions received from a new, target base station”). Jetzek further teaches that “[i]n rural areas, for example, line of sight links between mobile stations and base stations are rather frequent” so “even in case of hard handoff, a reliable handoff will be performed.” Id. at 19:8–13. Also consistent with Dr. Acampora’s testimony (Ex. 1012 ¶¶ 80, 83, 89), Jetzek teaches that “system capacity will most likely be increased by implementation of the present invention, since the present invention offers the possibility to control soft and hard handoff whereby efficient use of system resources is promoted.” Id. at 20:1–4.” slip op. at 25

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “When considering whether a claim would have been obvious “the knowledge of such an artisan is part of the store of public knowledge that must be consulted.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Based on the record before us, we agree with Petitioner (Pet. 2–3, 14–16, 20–36; Pet. Reply 15–18) and we credit and give significant weight to Dr. Acampora’s testimony (Ex. 1012 ¶¶ 22–28, 33, 48–57, 74, 76–78, 80– 92; Ex. 1017 ¶¶ 3–12; Ex. 2004, 71:20–73:13, 96:2–97:21), over Dr. Short’s testimony (Ex. 2003 ¶¶ 48–55) because, based on the record before us, Dr. Short’s testimony does not take into account the knowledge of one having ordinary skill in the art regarding GSM set forth in Dr. Acampora’s initial declaration. See, e.g., Ex. 1012 ¶¶ 33, 48; Ex. 1011, 316–317; see also Ex. 1017; Ex. 1018, 39–42, 60, 62; Ex. 1019, 39–40, 46–56; Ex. 1020, 1, 37–38, 44–47, 50–55.” slip op. at 39

  Patent outcomesUS 7,062,296 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,062,296
• Infinera Corp. v. Core Optical Technologies, LLCRehearing denied
  PTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3

  • BurdenDecided for patent owner

    “Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9

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

    “combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 6,782,211
• Google LLC v. Uniloc 2017 LLCRehearing denied
  PTAB · Jun 24, 2019 · IPR2017-01685 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied Uniloc’s rehearing request, leaving unchanged its determination that claims 1–4, 6–8, 18, 21, and 22 are unpatentable because claim 1 lacks the urged negative limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “While the claim language does contain a recitation of a “single request” by the user to generate a conference call request, we fail to discern any explicit claim language that precludes the user’s determination as to availability or the selection of call participants as part of or as a prelude to that recited “single request.” In other words, the language of claim 1 does not contain the negative limitation proposed by Patent Owner.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “2 As we indicated in the Decision, Patent Owner’s argument appears to be internally inconsistent because, “if Patent Owner’s proposed negative limitation is set forth explicitly in the claim language, as Patent Owner suggests, there would be no need for Patent Owner to argue that there is a reduction in scope due to a disclaimer.” Dec. 11 (citing Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[W]hen the patentee unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim [relative to the full ordinary and customary meaning] consistent with the scope of the claim surrendered.”)). the prosecution history’s alleged support for the proposed negative limitation. See Dec. 15–20.” slip op. at 5

  Claim construction
  Patents in suitUS 7,804,948

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.