- Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentablePTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28
Patent outcomesUS 9,426,794 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,426,794 - PTAB · Dec 11, 2024 · IPR2024-00963 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted obviousness grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner contends we should exercise discretion to deny institution because the court has not considered a motion to stay (Factor 1), jury selection in the District Court Litigation is scheduled to begin on February 17, 2026 (Factor 2), the parties have invested substantially in discovery by exchanging a high volume of documents and conducting extensive source code reviews (Factor 3), there is a high overlap between the challenged claims and those involved in the District Court Litigation (Factor 4), the parties are the same (Factor 5), and Petitioner’s arguments are meritless (Factor 6). Prelim. Resp. 35–36. Patent Owner acknowledges that jury selection in the District Court Litigation will not begin until two months after a Final Written Decision is scheduled to issue in this proceeding. Prelim. Resp. 35. On October 17, 2024, Petitioner offered the following Sotera Stipulation: “VusionGroup will not pursue an invalidity defense in Hanshow Tech. Co., Ltd. et al. v. SES-imagotag SA et al., Case No. 2:23-cv-00617 (E.D. Tex.) that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Ex. 1031. In view of all the circumstances, including the scheduled trial date and Petitioner’s Sotera stipulation, we decline to exercise discretion to deny institution.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we determine that Petitioner has demonstrated a reasonable likelihood that it will succeed on each of its challenges to patentability and we institute inter partes review. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’321 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. FURTHER ORDERED that the trial is authorized on all grounds set forth in the Petition; and.” slip op. at 39
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“1999)); see also Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 6. Nevertheless, Petitioner also proposes constructions of certain “system” limitations, should the Board determine that the claims recite “means plus function” limitations, and argues that interpreted this way, such claims would be indefinite because they lack disclosure of sufficient algorithms for the claimed functions. Pet. 6–7. Petitioner acknowledges that, because the claims do not use the term “means,” there is a presumption against their being interpreted as means plus function limitations and that purported indefiniteness does not preclude the Board from addressing the patent patentability of the claims on sections 102 and 103 grounds. Id. (citing Sony Elecs. Inc. v. Jawbone Innovations, LLC, IPR2023-01352, Paper 7, 47 (PTAB Mar. 6, 2024); Ex. 1003 Houh Decl. ¶¶ 51–52); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Patent Owner argues the claims do not recite means plus function limitations and agrees with Petitioner that no claim construction is required. Prelim. Resp. 7–8. The standard is whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson F.3d at 1349, Dyfan LLC v Target Corp., 28 F.4th 1360, 1365–1366 (Fed. Cir. 2022); see also Zeroclick LLC v. Apple Inc., 819 F.3d 1003, 1008–1009 (Fed. Cir 2018). Having reviewed the claims and the Specification, for purposes of institution, we determine that an ordinarily skilled artisan would have understood the subject matter that is claimed to have a sufficiently definite meaning as the name for structure so additional claim construction is required.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill (“POSITA” or “ordinarily skilled artisan”) as having “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics or automated object recognition methods and systems. Pet. 6 (citing Ex. 1003, Houh Decl. ¶¶ 18–19). Petitioner also states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes of this proceeding, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 7. 5 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed after March 16, 2013, we apply the AIA statutory basis for unpatentability. 6 U.S. Patent Application Publication No. 2012/0195363 (Ex. 1005) 7 U.S. Patent No. 8,139,817 (Ex. 1006) 8 U.S. Patent Application Publication No. 2011/0113461 (Ex. 1007) 9 U.S. Patent Application Publication No. 2014/0044348 (Ex. 1009) 10 U.S. Patent No. 8,634,601 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of the level of ordinary skill appears commensurate with the scope of the subject matters claimed and the references, we apply Petitioner’s description in this proceeding.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,701,321 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- BurdenUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Even if Patent Owner is correct that Atsuta is an FDD system, that argument does not show a fatal flaw in Petitioner’s obviousness case. Petitioner is not, as Patent Owner implies, proposing to change Atsuta’s purportedly FDD system to a TDD system or to bodily incorporate Atsuta’s entire system into Vornefeld’s system or to make a system that attempts to use both FDD and TDD together. Rather, Petitioner is applying Atsuta’s frame structure—the organization, in the same portion of the same frame, of timeslots for users located in different sections—in Vornefeld’s downlink portion of a frame in a TDD system. See, e.g., Pet. 38 (“the combination would use one known frame structure in place of another—specifically, Atsuta’s design that includes transmissions to multiple sectors in one frame.”). Patent Owner does not persuasively argue that Atsuta’s teachings in that regard are uniquely applicable to an uplink portion in a FDD system such that they are not also applicable to Vornefeld’s system. Rather, Patent Owner, in response to Petitioner’s contention that Atsuta’s frames are compatible with a TDD frame, argues that, “[b]ecause Atsuta provides little explanation as to how its invention could be modified to apply to downlink transmissions at all, let alone in addition to uplink, a POSA would not have applied Atsuta’s invention to downlink transmissions in a TDD frame as Petitioner alleges without support.” PO Resp. 44 (citing Ex. 2028 ¶ 109). That is an argument that there is no reason to combine the references’ teachings because Atsuta lacks an explicit teaching to combine them. It is not an argument that Atsuta’s frame structure cannot work in Vornefeld’s system and therefore the teachings cannot be combined. Additionally, Patent Owner’s requirement of an explicit teaching to combine in the references themselves has been rejected. KSR Int’l Co., 550 U.S. at 415; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).” slip op. at 36
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2024-00392 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“fundamentally incompatible.” PO Sur-reply 13 (citing Ex. 2028 ¶¶ 44, 148); see also id. at 11–19. The basis for Patent Owner’s argument is Dr. Chrissan’s testimony that FDD and TDD are mutually exclusive alternatives that cannot be combined in the same system and that one must select one or the other. See id. at 13–14 (citing Ex. 1024, 30:21–31:19; Ex. 2022, 4, 6; Ex. 2030, 9–10). This is not on point as Petitioner’s proposed combination does utilize one, namely Vornefeld’s TDD duplexing. Patent Owner does not address adequately the pertinent issue—whether Atsuta’s teaching of a portion of frame having timeslots for users in different sectors may be applied to Vornefeld’s TDD downlink frame. Dr. Almeroth’s testimony is credible and persuasive, and we find that Atsuta’s frame structure teachings are compatible with and applicable to the downlink portion of Vornefeld’s TDD frame. We do not find to be persuasive Patent Owner’s arguments and Dr. Chrissan’s associated testimony that the references are not combinable because they purportedly are different in certain ways.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In contrast, Petitioner persuasively presents argument and evidence that the pertinent teachings of Atsuta are compatible with Vornefeld’s system.8 Dr. Almeroth, in support of the Petition, testifies that “the frames 8 To the extent that Patent Owner asserts that the argument and evidence regarding compatibility in Petitioner’s Reply is untimely, we disagree. See, e.g., PO Sur-reply 16–17 (arguing that certain evidence “is support for Petitioner’s prima facie obviousness case, and so must have been provided in the Petition, if at all.”). The Petition contains the contention that a person of ordinary skill in the art would understand that Atsuta’s frames “are in Atsuta are comprised of different timeslots reserved for data transmission (Ex. 1005, 6:35-58), just as a TDD frame is.” Ex. 1002 ¶ 105 (cited at Pet. 32 for the “compatible” proposition); see also id. ¶ 94 (“Vornefeld’s and Atsuta’s frame structures are consistent with each other. Both are directed to TDMA frame structured transmissions between a base station and subscribers.”). Dr. Almeroth also provided credible testimony in support of Petitioner’s contention (Pet. 28–29) that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings. See Ex. 1002 ¶¶ 95–97; see, e.g., id. ¶ 96 (“A POSA would readily understand that combining Atsuta with Vornefeld would have been straightforward. Atsuta’s method for allocating time slots to subscribers in different sectors within a single TDMA frame matches Vornefeld’s MAC protocol, which allows transmission to a subscriber with the ‘granularity of a single time slot.’” (citing Ex. 1004, 54)). Dr. Almeroth further testifies that certain cited disclosures in Atsuta “is all the information a POSA would need to determine that it would be obvious that a single frame in Vornefeld could include downlink transmissions to different sectors,” and “[t]hat would be true regardless of Atsuta’s duplexing method (e.g., FDD or TDD).” Ex. 1025 ¶ 22 (citations omitted). Dr. Almeroth additionally opines that “a POSA would understand that Atsuta’s description of a TDMA frame would indicate to a POSA a methodology that would incorporate one or compatible with a TDD frame.” Pet. 32; see also id. at 27–29 (contentions regarding a reasonable likelihood of success in making the proposed combination). In the Response, Patent Owner argues that Petitioner’s compatibility contention is incorrect. PO Resp. 44. We find that Petitioner’s subsequent argument and accompanying evidence is an appropriate reply to Patent Owner’s argument of incompatibility.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner argues “Atsuta teaches away from the objective of Vornefeld . . ., instead teaching that transmissions must be made sequentially so they never overlap in time.” PO Resp. 2–3; see also id. at 46. Even if Vornefeld’s purported purpose is simultaneous transmission and even if the proposed combination would not retain such, as Petitioner contends (Pet. Reply 14–15), Patent Owner’s argument is not persuasive because the teaching of something different does not constitute a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner points to Vornefeld’s disclosure of simultaneous transmissions and to Atsuta’s disclosure of transmitting in a manner such that the signals to the stations do not overlap, but does not explain why a person of ordinary skill in this art would be discouraged from combining the references teachings so as to arrive at claimed subject matter that does not require simultaneous transmissions. See PO Resp. 45–46.” slip op. at 40
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Patent Owner counters that there is no motivation to combine because “a POSA would have recognized that Atsuta’s design would have provided little to no benefit of reduced power or hardware complexity relative to the added costs of its implementation in Vornefeld.” PO Resp. 58 (citing Ex. 2028 ¶ 128); see also id. at 55–56. We do not agree with Patent Owner. Atsuta explains that, in the then-conventional TDMA method, each of three zones had an independent frame and used three independent apparatuses. See Ex. 1005, 1:53–60, 5:21–27, Fig. 1 (depicting three circuits of the prior art). Atsuta teaches using one apparatus and a single frame for three zones. See id. at 3:59–66; Figs. 2, 4 (depicting one combined circuit). Atsuta further teaches that, due to the use of a common frame, “regardless of the number of divided zones, the demodulating circuit and the TDMA control circuit can be shared,” and, “[t]hus, the size of the receiving apparatus can be reduced and thereby the power consumption can be decreased.” Id. at 3:59–66; see also id. at 2:60–63 (“An object of the present invention is to share the same functional circuit so as to simply the structure the entire apparatus and reduce the size and power consumption thereof.”). We agree with Petitioner that Patent Owner’s complexity argument is incorrectly based on a comparison of only one of the three circuits of the conventional system to Atsuta’s system. See Pet. 18–19; PO Resp. 55–56 (arguing, for example, that Atsuta’s invention of Figure 2 has to handle three times the number of outputs and handle three times the number of mobile stations as the prior art device but failing to acknowledge that the prior art device required three circuits to do the same). Dr. Chrissan agreed on cross-examination that the TDMA control circuit itself in the combined system would not be three times as complex as one of the three in the conventional system. See Ex. 1024, 157:12–158:16. Dr. Almeroth credibly and persuasively testifies that “Atsuta’s system also simplifies the signal processing structure at the base station, reducing the required number of functional circuits (and computational requirements) to a single circuit.” Ex. 1002 ¶ 92 (citing Ex. 1005, 2:60–64). We agree with Petitioner that a person of ordinary skill in the art would see a benefit in using a single-frame system, as taught by Atsuta, to reduce the number of functional circuits and the overall complexity of the device, and that provides a motivation for making the proposed combination. See Pet. 27. Patent Owner argues that Atsuta’s frame structure—combining into a single frame what before was three frames for three sector zones—will require more bandwidth and that the TDMA control circuit will have to run at a higher clock rate, thereby offsetting some of the power savings. See PO Resp. 56–58. We disagree that a person of ordinary skill in the art would not make the combination because of this purported tradeoff, as Patent Owner urges. See id. at 58. “It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp., 21 F.4th at 800 (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”).” slip op. at 42
Patent outcomesUS 7,230,931 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00978 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“in Atsuta are comprised of different timeslots reserved for data transmission (Ex. 1005, 6:35-58), just as a TDD frame is.” Ex. 1002 ¶ 105 (cited at Pet. 32 for the “compatible” proposition); see also id. ¶ 94 (“Vornefeld’s and Atsuta’s frame structures are consistent with each other. Both are directed to TDMA frame structured transmissions between a base station and subscribers.”). Dr. Almeroth also provided credible testimony in support of Petitioner’s contention (Pet. 28–29) that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings. See Ex. 1002 ¶¶ 95–97; see, e.g., id. ¶ 96 (“A POSA would readily understand that combining Atsuta with Vornefeld would have been straightforward. Atsuta’s method for allocating time slots to subscribers in different sectors within a single TDMA frame matches Vornefeld’s MAC protocol, which allows transmission to a subscriber with the ‘granularity of a single time slot.’” (citing Ex. 1004, 54)). Dr. Almeroth further testifies that certain cited disclosures in Atsuta “is all the information a POSA would need to determine that it would be obvious that a single frame in Vornefeld could include downlink transmissions to different sectors,” and “[t]hat would be true regardless of Atsuta’s duplexing method (e.g., FDD or TDD).” Ex. 1025 ¶ 22 (citations omitted). Dr. Almeroth additionally opines that “a POSA would understand that Atsuta’s description of a TDMA frame would indicate to a POSA a methodology that would incorporate one or compatible with a TDD frame.” Pet. 32; see also id. at 27–29 (contentions regarding a reasonable likelihood of success in making the proposed combination). In the Response, Patent Owner argues that Petitioner’s compatibility contention is incorrect. PO Resp. 44. We find that Petitioner’s subsequent argument and accompanying evidence is an appropriate reply to Patent Owner’s argument of incompatibility.” slip op. at 38
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00900 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–11 because the petition did not show that G.984.3 and Khermosh teach or suggest the claimed parameter sets determined according to link quality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the arguments of the parties and the evidence of record, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) pertinent to the ’359 Patent would have had at least a bachelor’s degree in electrical engineering, computer engineering, or similar discipline and had at least two years of experience with optical communications and networks. Ex. 1003, ¶ 22. A person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background. Id. Pet. 10. Patent Owner does not dispute Petitioner’s contention and presents a near-identical description of a POSITA. Prelim. Resp. 9. 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 may also reflect the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’359 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he [claim] terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art under Phillips.” Pet. 8. Patent Owner agrees. Prelim. Resp. 9. No need exists to expressly construe any claim terms to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “[t]he values in this message, except for P1 and P2, are selected according to OLT parameters and preferences” and that P1 and P2 (length of preamble bits) are chosen by the OLT in order to ensure the total length of the burst overhead meets certain preset length restrictions. Id. at 32; see also Ex. 1005, 110. These notes confirm Petitioner’s acknowledgement that the parameters in this table are not determined based on link quality. Id.; see also id. at 35, 39. Thus, the upstream burst overhead parameters in the table in G.984.3, reproduced above, are not determined by the OLT “according to different levels of link quality” as this limitation requires.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,934,359 - PTAB · Nov 21, 2024 · IPR2024-00857 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on claims 1–19, with trial authorized on all petition grounds, based on a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having “a Bachelor’s Degree in electrical or computer engineering, computer science, or a similar field with two or more years of work experience with low-power connected devices.” Pet. 6 (citing Ex. 1003, Wolfe Decl. ¶ 29). Petitioner further states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes if its Preliminary Response, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim Resp. 7–8. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of a person of ordinary skill appears consistent with the subject matter of the ’216 patent and the references, we apply Petitioner’s standard for purposes of this Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 7; Prelim. Resp. 8. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1, 2, 5–8, 11–15, 18, 19 as obvious over Nagata and the knowledge of a person of ordinarily skill in the art; Claims 1, 2, 5–8, 11–15, 18, and 19 as obvious over Nagata in view of Hashiguchi; and or Nagata in view of Hashiguchi and Thubert. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“short intervals of time and communicates at a rapid interval (e.g.,150 msec every 4 sec). Id. at 55 (citing Ex. 1006 ¶¶ 70, 127–128, 138–139; Ex. 1003, Wolfe Decl. ¶ 158). Petitioner further notes that, although both Nagata and Hashiguchi transmit beacon signals synchronized to the awake modes of the labels to indicate the presence of information from an access point at scheduled, repetitive times, Nagata and Hashiguchi operate a little differently. Id. at 56. In particular, Nagata transmits a beacon signal synchronized to the electronic label wake-up time once every 60 seconds and varies the duration of the label’s awake mode (e.g., 30 seconds when the beacon indicates information to be transmitted is present); but Hashiguchi transmits a beacon signal synchronized with the electronic label’s awake time ratio, communicating beacons that correspond to the wake-up frequency, where the label listens for information for 150 msec in either a fast command mode (every 4 seconds or 15 times per minute) or a normal command mode (every 20 seconds or 3 times per minute). Id. at 56–57, 59– 60. Petitioner emphasizes that this feature allows Hashiguchi to improve its responsiveness, while reducing battery power drain, providing a reason for an ordinarily skilled artisan to combine th teachings of the references. Id. at 56–58. Noting that, like Nagata’s beacon signals, Hashiguchi’s beacon signals are sent at synchronized and prescribed time intervals in a manner that is indistinguishable from Nagata, Patent Owner argues that Petitioner fails to cure the defects of Nagata concerning the claimed fast wake-up instruction. Prelim. Resp. 23–24. As discussed above, the claim limitations do not exclude synchronous systems that transmit beacons signals or enter the fast and normal wake-up our analysis of Nagata (see Section IX.B herein), we determine that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Nagata and Hashiguchi and that their combined teachings would have disclosed or suggested all the limitations of the independent claims 1, 7, and 14 and their corresponding dependent claims to such an ordinarily skilled artisan.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,540,216 - PTAB · Nov 8, 2024 · IPR2024-00777 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 16–27 based on the grounds set forth in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) due to the advanced state of the parallel district-court action, which Patent Owner notes has scheduled trial date of May 19, 2025. See Prelim. Resp. 17. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),13 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a) based on parallel litigation.” slip op. at 7
- Parallel petitionsDenied
“institution under § 314(a) because this is the second proceeding challenging the ’815 patent and Petitioner has not justified two such challenges. Paper 8 (Patent Owner’s Response to Petitioners’ Notice Ranking Multiple Petitions). Petitioner filed a Notice Ranking Petitions, noting that this proceeding involves a second petition challenging the ’815 patent, after a petition in IPR2024-00735 challenged claims 1–15. Paper 4 (“Pet. Ranking”). Petitioner’s Ranking asserts that the two petitions challenge different claims, and that the 27 collectively challenged claims are voluminous, occupying approximately six columns of the ’815 patent. Pet. Ranking 2. We note also that the independent claims challenged in this proceeding include limitations not present in the claims challenged in the -735 IPR, such as multiple user profiles and encrypted video information. See Ex. 1001, claims 16, 21. We conclude that the ’815 patent’s claims justify two petitions based on a combination of the number of 13 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. limitations and the number of claims. We therefore decline to discretionarily deny institution under § 314(a) based on multiple parallel petitions.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 100. The Horn–Baumgartner–Candelore combinations were not presented during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner–Candelore grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have held a bachelor’s degree in Computer Science, Electrical Engineering, and Computer Engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1002 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 7, 2024 · IPR2024-00867 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 11, 12, 16, 17, 19, 20, and 84 on all petitioned grounds, finding a reasonable likelihood of success on the Nozaki-Haitani obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”)3 to clarify “the [Board’s] current application of Fintiv to discretionary institutions where there is parallel litigation” and to “confirm[] that the precedential import of Fintiv is limited to the facts of that case.” Guidance Memo 2. In particular, the Memorandum states that the Board will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 9 (emphasis added).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“3. Discussion We disagree with Patent Owner’s assertion that “Nozaki was considered during . . . reexamination of the ’848 Patent.” Prelim. Resp 4 (citing Ex. 1004, 165–190). To support this assertion, Patent Owner cites to 25 pages of the ’848 reexamination file (see Prelim. Resp. 4 (citing Ex. 1004, 165–190), arguing that “the grounds presented by Petitioner are duplicative of the art and arguments considered by the Examiner during . . . reexamination of the ’848 patent” (Prelim. Resp. 6), and concluding that “many of Petitioner’s arguments are simply a rehash of the reexamination request that was thoroughly considered by the Office during reexamination” (id. at 12). Patent Owner, however, provides no specific examples, comparisons, or analysis between the evidence and arguments concerning Nozaki presented in the Petition with the evidence and arguments concerning Nozaki ostensibly considered during the ’848 patent reexamination. Indeed, the only mention of “Nozaki” we can discern in the 25 pages of the ’848 reexamination file cited by Patent Owner are two listings of “Nozaki” patents appearing on pages 171 and 186 of the reexamination file. ’108”); Nozaki U.S. Patent 8,538,252 (“Nozaki ’252”)). These two “Nozaki” patents, however, are not the same Nozaki reference asserted by the Petitioner as prior art in the Petition. See Pet. 5 (citing Ex. 1006, WO 2007/060980 (“Nozaki ’980”)). The Nozaki reference asserted by Petitioner in the Petition is titled, “Electronic Camera and Image Processing Device,” is directed to an “electronic camera compris[ing] an image sensor, an image processing section, a face detecting section, a controlling section, a face image creating section, or a face recognizing data creating section, and a recording section,” contains 19 figures and has 57 claims. See Ex. 1006, code (57) Abstr., ¶ 41, pgs. 52–60.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, with at least two to three years of experience in the field of image processing.” Pet. 4 (citing Ex. 1005 ¶ 35). Petitioner further asserts that “[a]dditional education could substitute for professional experience, and significant experience in the field could substitute for formal Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 22. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’848 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Bederson. See Ex. 1005 ¶ 35. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, Petitioner contends that “all claim terms in the Challenged Claims should be construed according to their plain and ordinary meaning to a [person of ordinary skill in the art].” Pet. 5. Patent Owner states that “[g]iven the multiple reasons why the Petition should not be instituted, including 35 U.S.C. § 325(d) and 35 U.S.C. § 314, and to minimize the disputes that the Board needs to address at this preliminary stage, for the purposes of this Preliminary Response only, Patent Owner simply applies Petitioner’s own constructions to show how the Petitioner has not met its burden under 37 CFR § 42.104(b)(4).” Prelim. Resp. 25. For purposes of this Decision and based on this preliminary record, we determine that no claim term requires express construction at this stage of the proceeding. E. Patentability Challenges” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,176,848 - PTAB · Nov 7, 2024 · IPR2024-00717 · APJ Kevin C Trock · IPR · Institution
The Board instituted review of claims 1–11 on all four §103 grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“On September 12, 2024, with the Board’s authorization, Petitioner filed such a stipulation. Paper 8. Petitioner’s stipulation reads: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00717, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.. Id. Given that the language of Petitioner’s stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. B.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with camera technology.” Pet. 5. Petitioner’s declarant, Mr. Guidash, provides supporting testimony as to the level of ordinary skill in the art. Ex. 1003 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’757 patent. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Moreover, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, one cannot show non-obviousness by attacking references individually where, as here, the This is particularly relevant here, where Petitioner explains that its rationale to combine the teachings of Chinn, Takahashi, and EX-V7 derives, in part, from the teachings of the references themselves. See, e.g., Pet. 10–11 (“Moreover, both Chinn and Takahashi disclose delayed image capture after a voice command is given,” and therefore, a person of ordinary skill in the art “would have been motivated to look at Takahashi and EX-V7 to improve Chinn, and vice-versa.”). Based upon the current record, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that a person of ordinary skill in the art at the relevant time period would have had a reasoned basis for combining the teachings of Chinn, Takahashi, and EX-V7 in the manner proffered and would have had a reasonable expectation of success in that endeavor.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,757
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.